In the Spotlight with Tanner W. LongAugust 14, 2020
WilliamsMcCarthy LLP – Knowledgeable Local CounselNovember 20, 2020
When a hobby-turned-business experienced some unexpected growing pains, a local entrepreneur needed legal help to protect his company’s trademarks, intellectual property, and more.
Firefighter Luke Schneider’s passion for coffee started as a hobby. He enjoyed the process of roasting his own beans and playing with flavor profiles in his kitchen with his wife. He had no idea it would brew into a thriving online retail presence with a perk of giving back to his fellow firefighters and first responders. Luke and his team at Fire Dept. Coffee have relied on WilliamsMcCarthy LLP to protect and support the growing company.
Fire Dept. Coffee
Fire Dept. Coffee is a veteran-owned business in Rockford, Illinois, that brings together a team of active and retired firefighters who share a passion for a great cup ‘o joe. Together, they’ve built Fire Dept. Coffee, a direct-to-consumer online retail presence that drives more than 100,000 visitors a month. Its customers fuel the growth, showing (and sharing) their affinity for the brand, its stellar coffees and merchandise, and its mission of supporting first responders.
“We started with our Fire Dept. Blend, and it just took off,” said Schneider, the company’s CEO. “I think that our corporate ethos of giving back is reflected in our customer base so it’s something very special.”
Impressive Growth Requires an Investment
To continue safely building the brand, the team recognized they needed to protect the assets they created. Fire Dept. Coffee enlisted the trademark and intellectual property advice of WilliamsMcCarthy Partner Joel Huotari, who helped them navigate securing trademarks for their name and brand assets, which included iconic vintage firehouse lettering for “FDC,” the acronym associated with their name.
Drawing Some Unwanted Attention
As soon as they applied to register the Fire Department Coffee name as a trademark, an out-of-state company filed an opposition with the United States Patent and Trademark Office in hopes of preventing the mark from getting registered.
“Joel helped us fight off that challenge and secured our rights to continue using our company’s name, which is critical to our continued success,” Schneider recalled.
Sometimes even trademarked brands come under fire, which is exactly what happened next when a major municipality with deep pockets and a similar acronym took issue with the Fire Dept. Coffee logo.
“The bigger you get, the more likely people are to come after you,” Schneider noted. “Here we were, this small but growing company, now in a position to respond to a federal lawsuit against our brand from a player with pretty much unlimited resources at their disposal.”
The business turned to WilliamsMcCarthy Partner Marc Gravino, an experienced litigator who was able to provide the counsel they needed to resolve the dispute quickly and efficiently.
“Marc gave us the reality of the situation and saw things that would happen before they happened,” shared Schneider. “His insight helped us evaluate our options, and ultimately led us to change our strategy. He could have dragged things out, but at the end of the day, he made it so that we could survive what easily could have ended another business. Simply put, without Joel and Marc in our corner, our company would not be the same.”
Growing and Giving Back
Today, Fire Dept. Coffee is growing and thriving, doubling down on its mission to support first responders and community organizations. They recently formed a charitable foundation with the help of WilliamsMcCarthy Partner Adam Fleming, who assisted with drafting the foundation’s articles of incorporation and bylaws.
Fire Dept. Coffee has big goals, which include increasing its online consumer base, entering a retail market, and reaching $2,000/month in charitable giving in the coming year. They’re grateful for the support from WilliamsMcCarthy and look forward to continuing the relationship knowing the firm can meet any of their needs.
“We believe now more than ever how important it is to protect what we’re building, and WilliamsMcCarthy is a great team that helps us do that,” concluded Schneider. “They are very interested in our business and handle everything as if it is their own. Everyone we’ve worked with has been talented, organized, respectful, and professional – they’re simply one of the best firms in the region.”