What do you think of when you hear the word Velveeta? Me too, childhood — complete with piping hot Campbell’s tomato soup — and perfectly melted grilled cheese sandwiches. Later in life, at least for me, came liquid gold and RO*TEL queso dip, usually on weekend game days. And, my daughter might add to the Velveeta memory mix, perfectly smooth shells and cheese.

Velveeta can conjure up some less than innocent and charitable thoughts too. Eventual trips to the doctor. Perhaps cardiac stents. And, even probing medical questions like, is that yellow loaf or brick really cheese? Turns out, it’s technically not real cheese, rather the box even calls it “Pasteurized Prepared Cheese Product.” What does that even mean?

Yet, Kraft apparently has felt no shame, remorse, or even second thoughts in continuing to maintain the original 1923 Velveeta trademark registration for “cheese,” despite an FDA warning letter some fifteen years ago that apparently led to the more accurate “Pasteurized Prepared Cheese Product” appellation.

As a trademark type though, and putting aside the interesting trademark abandonment question of whether Kraft actually uses the Velveeta mark in connection with the recited goods, “cheese” — the notion of a coined trademark comes to mind with Velveeta too. The kind of trademark that is invented, or let’s say, made up, or produced for the exact purpose of functioning as a trademark indication of source.

Some other examples of coined marks include Exxon, Rolex, and Google. Some call those types of marks the gold standard since they are the strongest trademarks along the Spectrum of Distinctiveness. They are often singular in meaning, and ripe for dilution protection.

So, imagine my surprise seeing a “room” dedicated to Velveeta, as I walked 6th Street with one of my sons, this past weekend, in Austin, Texas, inspiring me to capture the image shown above to further document and discuss it: The Velveeta Room.

My surprise was especially fine-tuned since the apparently-non-eponymously named room did not appear — at least, on the surface — to be promoting liquid gold, yellow bricks, golden loafs, queso, or even shells and cheese, much less the almost century old Velveeta “cheese” brand or distinctive box.

Mind you, there was a day when Kraft appeared to give a serving of some serious trademark enforcement attention to the likely famous Velveeta trademark, even when the target showed up selling comedy as opposed to calories.

Back in the day, circa 1993, Kraft opposed registration of Blue Velveeta for “entertainment services in the nature of comedy and musical acts.” It appears the improv act melted away in the mid-90s — not sure whether it was voluntary or not.

The Velveeta Room apparently began around the same time as Blue Velveeta, circa 1988. Perhaps either of their fans can help explain their branding, because I’m at a loss. Did the improv group or does the comedy lounge specialize in cheesy humor? Pasteurized jokes? Fake laughter and chuckles? Or perhaps, unhealthy routines and the need for medical attention?

The irony has not escaped me that the Velveeta product was invented to solve the problem of “broken cheese” and the Velveeta brand and trademark was invented or coined to identify, distinguish, and indicate the source of an engineered — or to some, fake cheese product.

It remains to be seen whether the Velveeta trademark registration is itself “broken,” whether the brand simply melts away over the next century, whether its meaning will further evolve and blend into a smoothly-delivered butt of jokes, or whether Kraft will laugh all the way to the bank.

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend:

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So, what do folks think, does this photograph of a gasoline pump constitute “use in commerce” of the NASCAR trademark and brand in connection with gasoline, classified in Int’l Class 4?

NASCAR has all sorts of stuff that can be purchased online with it’s brand name and trademark on it, but to serve a trademark function (identify, distinguish, and indicate the source of gasoline), and to demonstrate proper use in commerce of a word mark (as opposed to non-traditional subject matter like colors and scents — we’ll pass on the possibility of taste for this one though), applying the mark directly on the goods isn’t possible given the liquid state.

NASCAR also has an impressive trademark licensing program and more than a semi truckload of federal trademark and service mark registrations to protect its licensed brand, but interestingly, none presently covering Int’l Class 4 or gasoline.

It appears the closest NASCAR has come to protecting gasoline in Int’l Class 4 is through this expired NASCAR registration for motor oil and automotive greases in Int’l Class 4.

Yet, I’m thinking TMEP 904.03(c) contemplates the issue and fully supports using the above photo as an appropriate specimen to demonstrate use in commerce of the NASCAR mark for gasoline, by showing the mark directly on the containers or packaging for the goods: “gasoline pumps are normal containers or ‘packaging’ for gasoline.

Why do you suppose NASCAR hasn’t taken this step (yet)?

“Forties at 4” was a time-honored Friday tradition among my engineering classmates in college.  After our last class, several of them would purchase Miller (if we could find it in a 40 oz) or Old English or some other malt liquor that provided the most bang for the buck.  Cracking one open always signaled the beginning of the weekend.

With the growing number of brewery acquisitions, not to mention yesterday’s approved merger of the two largest brewing companies in the world, many breweries may be thinking about the beginning of their weekend – an exit strategy.

An acquisition of a brewery can provide significant marketing, production, and sales resources otherwise unavailable to the brewer.  They can expand a brewery’s brand availability and marketshare.  They can free the founders up to return back to whatever brought them to start that home brewery in the basement without worrying as much about the day-to-day operations.  I often hear from brewers that they love what they do, but “it’s starting to feel like work, and I didn’t anticipate feeling like that.”

2015 saw 19 acquisitions of craft breweries worth $13 billion, and there’s no doubt that number will be even higher in 2016.  When valuing companies for craft brewery acquisitions, besides their balance sheets, there is a clear emphasis on the strength of the brand and making sure the brewery’s intellectual property is in order.  Every brewery has essentially the same equipment, the same assets, and the same costs.  It’s the brand and the quality of the beer that can push it ahead of similarly positioned breweries, attracting an acquirer.

When it comes to most breweries’ intellectual property, there are Four T’s that breweries, or any craft beverage manufacturer for that matter, should be thinking about to best position themselves for a strong valuation in an acquisition when the time is right.

  1. Trademarks are clear – Have you conducted a proper clearance search of your brewery name, your flagship brews, and any specialty brew names?  Before releasing any new beer, search at least the U.S. Trademark Office Records, the internet, and beer resources such as Untappd or BeerAdvocate to see whether the mark is available.
  2.  Trademark registrations for at least your brewery name and your flagship brews.  Have you filed federal trademark applications to protect your brands nationwide, even if your sales territory has been more limited?  Are you enforcing the scope of your trademark rights in your brands to continue to keep your rights broad?
  3.  Trade dress – Maybe it’s a consistent theme in your product packaging.  Or the unique way you serve a flight of beer in your taproom.  Distinctive trade dress can complement a creative set of trademarks, and can be protectable itself.
  4.  And, most importantly, Taste.  “Quality” has been a strong focus of brewer’s guild and Brewer’s Association presentations over the past few years.  Consistently brewing high quality beer is important for your brand.  Are you taking the necessary and appropriate precautions to ensure that your beer recipes remain trade secrets?  Have you made sure in any employment agreement with a brewer that the brewery owns the recipes?  Are you investing in the proper equipment and necessary training for your staff to ensure high quality beer production?

Some breweries decide to forego the expense of properly protecting the brand initially, making it potentially less attractive for an acquirer and without as big a payoff when they may be ready to make this transition.

-Wes Anderson, Attorney

Another for the file of newly-registered product configuration marks: acquired distinctiveness, sold by the gallon.


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According to 2014 numbers released by the U.S. Department of Agriculture, Americans drink 37 percent less milk than they did in 1970. Whole milk consumption has plummeted by 78 percent during the same period. The dairy industry has spent countless millions on advertising, and don’t be surprised if you see the MILK LIFE campaign featured prominently in the upcoming Olympics (sadly, the “Got Milk” campaign was discontinued in 2014).

For its part, it looks as though HP Hood LLC decided to shake up the humble gallon-sized milk bottle, and it recently obtained a registration for the configuration shown below.

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Named the “LIGHTBLOCK Bottle,” the design actually made its debut in 1997, and, as the name suggests, the primary function of the bottle is to block light “to protect against off flavors and vitamin depletion.” But Hood also made some changes to differentiate its design from the typical milk bottle, and filed an application for the configuration in June 2014.

The application identifies “Dairy products, namely, fluid milk” — I probably shouldn’t even ask if there are other types besides “fluid”? The mark description is also a doozy:

The mark consists of the three-dimensional configuration of the size and shape of a plastic jug-type one gallon container for milk products, having four vertical sides of equal width and a rounded, rather than pyramidal top. The vertical panels are proportionally taller than in commonly used one gallon milk containers. The overall dimensions of the container are approximately 6 1/4 inches wide by 6 1/4 inches deep by 10 inches high. The jug-handle of the container is placed at the middle of one side rather than at a corner. There are four horizontal ribs indented in the two side panels which are adjacent and perpendicular to the handle side. There is one vertical rib indented into each corner of the container where the vertical panels are joined. There are two horizontal ribs indented in the back panel below the handle.

It’s highly uncommon to see actual measurements of the product configuration within a mark description, as brand owners generally like to make subtle changes in their overall packaging while maintaining the distinctive features of the design. Given the standardized gallon size for the bottle, this may be less of a concern for Hood.

Thanks in part, perhaps, to a correctly-tailored mark description and a specific drawing (with prodigious use of the dotted lines to indicate what is not claimed as part of the trademark), Hood avoided a functionality refusal for the specific features identified in the mark.

The main objection for Hood to overcome was a non-distinctive trademark refusal, and Hood’s claim of over five years’ use of the mark was insufficient. Hood overcame this refusal with a simple, concise declaration containing sales figures (in the hundreds of millions of bottles). Hood also included a “comparison chart” showing the differences between its bottle design and its competitors — specifically, a “rounded top (not pyramidal),” a handle centered on the side, and “horizontal and vertical ribs.”

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So, what do you think? Is it worth the cost of registration? Would this milk jug catch your eye in the dairy section?

-Wes Anderson, Attorney

It has not been a great week for oatmeal.

The Quaker Oats Company (a subsidiary of food and beverage giant PepsiCo), on the heels of a recall for its Quaker Quinoa Granola Bars, has also made a rather embarrassing gaffe on the trademark enforcement front. And unfortunately, demand letters are far more difficult to recall.Screen Shot 2016-05-20 at 8.02.49 AM

Evidently, an in-house trademark attorney at Quaker Oats recently discovered a Christmas tree farm in Visalia, California using the (rather odd) name “Quaker Oats Christmas Tree Farm.” The attorney sent a somewhat perfunctory template demand letter to the farm, citing Quaker Oats’ various registrations for the QUAKER trademark:

It was therefore quite a surprise to discover that you are operating a business under the name “Quaker Oats Christmas Tree Farm.” Your use of our trademark is likely to mislead consumers into believing that your business is associated with the Quaker Oats Company. It is also likely to weaken our very strong trademark. In light of the foregoing, we hereby demand that you immediately stop all use of the “Quaker Oats” name. [. . .] While we would like to settle this matter amicably, we will take all steps which are necessary and appropriate to protect our name.

Seems reasonable enough. Diligent enforcement is, after all, an essential facet of a robust trademark portfolio. But there are two problems here: first, the farm in question is owned and operated by people of the Quaker faith. And second, the farm’s actual name is the Quaker Oaks Christmas Tree Farm, a “sustainable agriculture and environmental education center in the Kaweah Delta of California.”

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And as tends to occur when big companies send flimsy demand letters, things went public fairly quickly. The Religious Society of Friends (Quakers) in Irvine, California soon posted the letter, along with its truly entertaining response (which you should read in full at the link):

My breakfast this morning—rolled oats by the way—was interrupted by the arrival of your letter via FedEx, which was delivered to us despite the fact that you have misspelled our company name which is Quaker OAKS Christmas Tree Farm. Our farm was so named because religious services were held outdoors on this farm under a great oak tree until about ten years ago when we were able to move into our new Meetinghouse on another corner of our farm.

Our business is 100% owned and operated by Quakers. I suspect that your firm employs considerably fewer, if any, Quakers. We trace our Quaker ancestors back 320 years and they were mostly farmers, but I don’t know how many of them grew oats for your company. My guess is that you may be selling far more Lutheran oats, Methodist oats, or maybe atheist oats. Could your company be guilty of product source misrepresentation?

When it comes to enforcement, I’m quite certain Quaker Oats has a lot on its plate (pardon the pun), but here’s another reminder to wield the power of a demand letter with caution, and to always double-check the details of a potential infringer’s use.

– Mark Prus, Principal, NameFlash

Creating fictitious names for products is standard practice in many industries. Creating a brand that evokes a certain image or feeling is so commonplace that most of us don’t think twice about it.

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Consider Genova Tonno. In the Italian language, Genova is the city of Genoa, and Tonno is tuna. So you might infer that a can of Genova Tonno contains tuna caught in the waters off Genoa. Actually, Genova Tonno is a specialty brand of tuna owned by Chicken of the Sea. The label says:

Genova Tonno© Premium Yellowfin Tuna. Wild caught from deep waters, Genova Select Yellowfin is all natural with no additives or preservatives. Genova is packed in the Mediterranean tradition with olive oil, which provides a rich and delicious flavor.

Chicken of the Sea is owned by a Thai-based company called Thai Union, which has its own packing facilities in Thailand. While the source of its tuna is never identified beyond “deep waters” it is believed that those deep waters are not off the coast of Italy, but rather are off the coast of Thailand.

By all reports, this is very tasty tuna. Do you really care that the manufacturer is positioning its product as being Italian when its heritage is clearly not Italian? If so, perhaps you should buy Asdomar which claims that its tuna is “100% processed in Italy.” Note: even this does not mean that all of their tuna is caught near Italy

Need another example? Would you be upset to know that Häagen-Dazs was born in the Bronx, New York in 1961? Its creators were not Scandinavians but rather two Polish immigrants, Reuben and Rose Mattus. Why did they choose the name Häagen-Dazs? The name was created to look Scandinavian for Americans because the European cachet radiates craftsmanship, tradition, and wholesomeness, thereby justifying the higher price.

Recently in the UK, Tesco has been drawing flak from consumers because they created seven fictitious farm names and are using them in marketing their products. Fake farm names such as Rosedene and Nightingale now provide a cachet to their product lines.

“Authenticity” is a traditional buzzword for marketing. Studies have shown that brands should be authentic to build trust among consumers. At what point does a “fictitious” name cross the “authenticity line” and become a “fake” name?

The Tesco example shows one flash point is food sourcing. Consumers want to know where their food comes from and apparently once people discover that “Rosedene Farms” isn’t a real place they no longer trust that those apples sold under that brand name are of high quality. Critics in the UK are calling this practice “legal deception.”

The US Patent and Trademark Office has a fairly broad definition of what they consider to be “legal deception” in geographic names. The policy of a name being “geographically deceptively misdescriptive” would prevent the registration of such a trademark. According to the USPTO website, “A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.”

That would seem to indicate that Tesco might be facing some storm clouds on the horizon if they try to register their set of “fake farm names” in the US.

Perhaps I am immune to this issue because I am a professional name developer with 25+ years of experience as a consumer products marketer. I long ago stopped losing sleep over the fact that Betty Crocker isn’t a real person!

-Wes Anderson, Attorney

When a company puts “DISTINCTIVE” on its own packaging, its usually a sign that it highly values its trade dress and product configuration rights. That’s certainly the case for Pepperidge Farm and its Milano cookies.

The commercial bakery giant has taken aim at Trader Joe’s, the popular grocery chain, for selling house-branded “Crispy Cookies” that borrow a few design cues from Pepperidge Farm’s MILANO cookie, the oval-shaped cookies held together with chocolate filling. See for yourself:

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Taking umbrage at Trader Joe’s rounded-rectangle sandwich cookies, Pepperidge Farm filed a complaint in the District of Connecticut, alleging trademark infringement and trademark dilution under the Lanham Act, common law, and Connecticut state law.

While Trader Joe’s isn’t using the MILANO name, it turns out Pepperidge Farm has a registration in hand for both MILANO the word mark and a separate registration for “a configuration of a cookie comprised of a filling sandwiched between two oval-shaped cookies.” The complaint makes reference to this as the “MILANO Configuration.” Obtaining such a registration can often be a significant undertaking, but Pepperidge Farm did not receive any functionality refusals and was able to show acquired distinctiveness in its cookie configuration.

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And Pepperidge Farm’s complaint meticulously claims other elements of its packaging – a “fluted paper tray” to hold the cookies, and the use of vertical, rather than horizontal, packaging – as part of its overall trade dress that Trader Joe’s mimics.

A sidenote: though they are ostensibly “for adults,” I haven’t had MILANO cookies since childhood, and in my past trips to Trader Joe’s I never noticed they were selling a similar product. Unfortunately, in doing my due diligence for this blog post, I was informed that the local Trader Joe’s was all out of the Crispy Cookies – even in the back! Evidently, they are quite the popular item in St. Louis Park, Minnesota, or there is such a thing as a “cookie-litigation hold.” In any case, my would-be taste test was foiled. I regret the omission.

Back to the merits: a likelihood-of-confusion claim may be tough sledding for Pepperidge Farm. Trader Joe’s is known for filling its stores with its own private label products in its stores, and these products frequently borrow naming and design cues from more famous brand names. What’s more, the products do not appear side-by-side in the marketplace; Trader Joe’s products are sold only in their own stores — so you won’t find the offending treats sold alongside MILANO cookies at your more conventional big-chain grocery store. In essence, it’s hard to envision a consumer buying TJ’s cookies and having any confusion as to whether they come from or are affiliated with Pepperidge Farm.

On the other hand, Pepperidge Farm’s dilution claim may have considerable merit: a dilution claim does not require consumer confusion, only that the MILANO Configuration be deemed a “famous mark” and that Trader Joe’s similar cookie configuration is likely to diminish the distinctive quality of the MILANO Configuration.

Proving the fame of the MILANO Configuration may be the sticking point, and Pepperidge Farm will need to marshal a wealth of evidence to show third-party recognition of the cookies’ shape, configuration, and packaging. The Pepperidge Farm complaint does make some reference to this, stating “the MILANO® cookies are instantly recognizable and due to their popularity, have appeared in pop culture and TV shows like Frasier, Will and Grace, Seinfeld, and Two and-a Half Men.”

I’d be shocked if this clip from Family Guy didn’t make its way into the conversation, with references to the MILANO name, packaging, and cookie shape along with an irreverent reference to the old tagline “Pepperidge Farm Remembers”:

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Remember those sweet, warm New England summers? Remember sippin’ lemonade underneath a shady tree? Remember when you hit that pedestrian with your car at the crosswalk and then just drove away? Pepperidge Farm remembers. But Pepperidge Farm ain’t just going to keep it to Pepperidge Farm’s self free of charge. Maybe you go out and buy yourself some of these distinctive Milano cookies, maybe this whole thing just disappears.

So, armed with all this public recognition, will the MILANO Configuration reign supreme? I suspect Trader Joe’s might just have a different product on store shelves once they are back in stock at my local shop.

-Wes Anderson, Attorney

A common refrain: “There must be a way to protect this idea, either by trademark or copyright.” Regrettably, in many instances, the answer is “none of the above.” Take, for example, the humble chicken sandwich.

Late last week, a three-judge panel at the Court of Appeals for the First Circuit upheld a granted motion to dismiss with a holding worthy of a double take: “the district court properly determined that a chicken sandwich is not eligible for copyright protection.”

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The plaintiff, Norberto Colón Lorenzana, was a former employee of South American Restaurant Corporation (“SARCO”), a franchisee of Church’s Chicken in Puerto Rico. During his employment as a manager, Lorenzana came up with “the concept for a new chicken sandwich that could be included on Church’s menu.” As alleged in Lorenzana’s complaint, the concept was a hit, and SARCO/Church’s began offering the new sandwich – dubbed the “Pechu Sandwich.” SARCO eventually obtained a federal trademark registration for the mark PECHUSANDWICH in 2006, though SARCO did not file a five-year declaration under Section 8, and so the registration was cancelled in 2013.

Lorenzana’s relationship with SARCO and Church’s soured from there, and Lorenzana brought suit in the District of Puerto Rico, alleging that SARCO “received economic benefits from plaintiff’s creation” without compensating him, and that SARCO “intentionally, willfully, fraudulently, and maliciously procured the registration of Plaintiff’s creation in the Patent and Trademark Office without his consent and proper compensation” — essentially a claim for fraud on the PTO. Lorenzana sought “no less than $10,000,000.00 as damages.” (You can read the full complaint here)

SARCO quickly moved to dismiss Lorenzana’s complaint, asserting that it did not state sufficient facts to allege fraud on the PTO. Ruling on the motion, the District Court for the District of Puerto Rico agreed and dismissed the claim. The court then generously read in a claim for copyright infringement (the complaint made no specific reference to copyright protection or the Copyright Act), but summarily dismissed that claim as well, holding “Neither plaintiff’s idea for the chicken sandwich recipe or the name ‘Pechu Sandwich’ is subject to copyright protection.”

Lorenzana appealed to the First Circuit, which unsurprisingly affirmed the District Court. As a quick refresher, according to Section 102 of the Copyright Act, there are eight categories of creative works eligible for copyright protection:

(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

Those categories make no room for recipes, which are functional directions to achieve a result rather than a creative work. Therefore, the First Circuit concluded that “[a] recipe — or any instructions — listing the combination of chicken, lettuce, tomato, cheese, and mayonnaise on a bun to create a sandwich is quite plainly not a copyrightable work.”

From there, the First Circuit turned “to the meat of [the] allegations” (pun presumably intended) and held that Lorenzana failed to sufficiently allege “that any false statement exists” that would constitute fraud on the PTO. So while the name PECHUSANDWICH is certainly eligible for trademark protection as evidenced by the registration, Lorenzana did not sufficiently allege factual grounds for fraud. Lorenzana did not claim ownership of or priority to the PECHUSANDWICH mark, presumably because SARCO, not Lorenzana, was the party to actually use the mark in commerce.

While Lorenzana is left uncompensated for his sandwich, we at least have the comfort of knowing that chicken sandwiches remain above the copyright infringement fray.

Aaron Keller, Managing Principal, Capsule

How fast are you getting at typing with your thumbs? My high school typing instructor would be so proud of my advancements. I’d say 60 words a minute if I am humming along with an idea of what to write. Not bad, proud to say I am writing this post on my Apple iPhone 6, and though my thumbs are manly, the letters are accommodating.

Now, what makes me curious is the rewarding outcome for all this work. The sound when I have finally completed my effort and this message is sent. I know the sound, it feels like a small jet taking off from my desk.

The sound brings a little rush and a mental reward for all my effort and tired thumbs. To me the sound has a feeling attached, the feeling of accomplishment.

So, in my searches for the entity owning this sound, I have explored the world of Apple intellectual property. I’ve found a registered trademark for the Mac startup chime and a trademark for the store design layout, both I have enjoyed and agree there should be some attribution and ownership.

But, nothing on the sound rapidly approaching as I finish this blog post. Perhaps it has been filed and just not obtained yet, or maybe this is a gap in the legal department at Apple (not likely).

I also have to admit to an anterior motive for finding the intellectual property behind this story. As an author of our next book on The Physics of Brand, we are seeking stories of brands protecting intellectual property surrounding the less considered sense (sound, taste and touch).

So, if you’re also getting excited about finishing this blog post and wondering, “what stories do I know about non-traditional trademarks,” leave a comment. Perhaps we will be able to share your name and story.

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?