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When is a Flavor/Taste Trademark Possible?

Posted in Articles, Food, Infringement, Law Suits, Non-Traditional Trademarks, Sight, Taste, Trademarks, TTAB, USPTO

Are your intellectual taste buds craving more discussion of non-traditional trademarks? It’s not every day we have the opportunity to write about a restaurant’s claimed trademark protection for the flavor or taste of certain food dishes and a restaurant’s claimed trade dress in the chef’s unique plating or visual presentation or appearance of certain food dishes, including the delicious-looking baked ziti to the left.

Last week Professor Eric Goldman wrote an interesting Forbes article about an unusual federal trademark infringement case from Texas involving those very unlikely non-traditional trademark claims. In that case, United States District Judge Gregg Costa dismissed both the taste trademark claim and the plating trade dress claim before the plaintiff even had a chance to be seated much less order an appetizer.

Although Judge Costa called the taste trademark claim “half baked” well into the third course of his decision, the first few lines should have tipped the reader off to his skepticism of the claims:

“Intellectual property plays a prominent and growing role in our Information Age economy.  High-stakes litigation over software patents, for example, is increasingly common in federal dockets.  In this case, though, the plaintiff seeks intellectual property protection for something quite traditional: the meal one might order at a neighborhood pizzeria.  New York Pizzeria, Inc. contends that the flavor of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to protection under the trademark laws.”

The plaintiff was denied the opportunity to try and prove taste infringement because its complaint failed to identify a valid taste trademark given the “insurmountable” functionality hurdle:

“The functionality doctrine is a significant hurdle for any party seeking to protect a flavor as a trademark. In In re N.V. Organon, for example, the Trademark Trial and Appeal Board (TTAB) denied a pharmaceutical company a trademark in the orange flavor of its pills on functionality grounds. Because medicine generally has ‘a disagreeable taste,’ flavoring ‘performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade.’

If the hurdle is high for trademarks when it comes to the flavor of medicine, it is far higher—and possibly insurmountable—in the case of food. People eat, of course, to prevent hunger. But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.”

Sound familiar? It reminds me of our taste infringement blog post from a few years back, where I wrote:

“Of course, there is a reason for the lack of or scarcity of taste trademarks. Any product intended for human consumption is unlikely a candidate for taste trademark protection given the functionality doctrine. So, Coca-Cola can’t stop another from selling a beverage that has the same taste as Coca-Cola, just because it tastes the same, unless of course, the maker of the competitive beverage hired away key Coke employees who unlawfully revealed the closely guarded secret formula. That is how trade secret litigation happens, not “taste infringement” litigation.”

And, even longer ago than that, I answered the very question posed in the title of this blog post:

“I have suggested before that taste is only available as a possible non-traditional trademark when it is applied to a product not meant for human consumption (e.g., flavored ear rests on eyeglasses and flavored ballpoint pen caps). Foods, beverages, and other oral products that are meant to be consumed or placed in the mouth and have a pleasing taste most likely are to be disqualified from enjoying trademark protection in the taste or flavor, based on the functionality doctrine.”

Although the taste trademark claim was “half baked,” Judge Costa thought the plaintiff’s trade dress plating claim deserved a closer look.

“[T]here may be some rare circumstances in which the plating of food can be given trade dress protection. When plating is either inherently distinctive or has acquired a secondary meaning, when it serves no functional purpose, and when there is a likelihood of consumer confusion, it may be possible to prove an infringement claim. It is conceivable that certain well-known “signature dishes” could meet this very high standard.”

Nevertheless, Judge Costa dismissed the trade dress plating claim too, since the plaintiff failed to articulate the specific elements of its claimed trade dress in the visual presentation of certain food dishes.

Given all that, what do you make of U.S. Trademark Registration No. 1,623,869, registered more than twenty years ago, back in 1990.

The registered non-traditional configuration mark mentions flavors and is described this way:

“THE MARK CONSISTS OF AN ARCUATE CONFIGURATION OF FIVE FLAVORS OF ICE CREAM, NAMELY, CHOCOLATE, STRAWBERRY, PALMER HOUSE (NEW YORK CHERRY WITH NUTS), PISTACHIO AND ORANGE SHERBET, ARRANGED FROM BOTTOM TO TOP, AS IT IS SOLD ON A CONE.”

So, is the claimed combination of flavors actually protected by this federal trademark registration?

Or, does it merely protect the appearance, given the below drawing of the registered non-verbal mark?

And, given the color claim, detailed below:

“THE MARK SHOWN ON THE DRAWING IS LINED FOR THE COLORS BROWN, PINK, WHITE, GREEN AND ORANGE, AND COLOR IS CLAIMED AS A FEATURE OF THE MARK.”

 

Or, does the registration perhaps protect both taste and appearance?

Unlikely, but if so, it is the only federally-registered taste/flavor trademark I’ve seen (and not tasted) before.

What do you think?