The following is a guest blog post by Michael J. Thomas, a solo practitioner and founder of Creative Vision Legal, a Bay Area law firm offering legal services tailored to artists, musicians, and small business owners.
Can you trademark a pizza flavor? A recent decision says no and offers a glimpse at the edge of the known trademark universe. The doctrines of functionality and inherent distinctiveness, like the force of gravity or tendrils of dark matter holding the galaxies together, will keep the trademark universe from expanding or hurtling waywardly outward (depending on your view).
The decision in New York Pizzeria, Inc. v Syal (SD Tex Galveston Div.) came down from a Rule 12(b)(6) motion to dismiss and involved a plaintiff seeking to stop a knock-off restaurant chain from using its recipes, suppliers, and proprietary kitchen processes. The plaintiff argued that its “specially sourced branded ingredients and innovative preparation and preservation techniques contribute to the distinctive flavor” of its food, thus entitling it to protection under the Trademark Act of 1946 (Lanham Act) (15 USC §§1051–1127).
The court granted the defendant’s motion as to the Lanham Act flavor claim, applying two important trademark doctrines to reach this conclusion:
- Inherent distinctiveness or secondary meaning. To obtain protection under the Lanham Act, a trademark must either be inherently distinctive or else have acquired a secondary meaning that distinguishes the goods. It is only when a flavor has “acquired distinctiveness or `secondary meaning’—that is, when customers have learned to associate the flavor with its source—that it has any chance of serving as a valid trademark.” The court found it unlikely for a pizza flavor to ever be inherently distinctive because it doesn’t automatically suggest a product’s source.
- Functionality. The doctrine of functionality bars trademark protection to product features that are “functional,” i.e., “essential to the use or purpose of the article.” The court noted the “possibly insurmountable” hurdle in trademarking the flavor of food: “People eat, of course, to prevent hunger. But the other main attribute of food is its flavor…The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.”
Two cases cited in New York Pizzeria Inc. demonstrate the outer reaches of trademark law. In In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006), a pharmaceutical company was denied a trademark in the orange flavor of its pills. The court reasoned that, because medicine generally has “a disagreeable taste,” flavoring added to it “performs a utilitarian function.…” By contrast, in In re Clarke, 17 USPQ2d 1238 (TTAB 1990) a floral fragrance used in sewing thread and embroidery yarn could be trademarked because the scent wasn’t “an inherent attribute or natural characteristic” of the goods and served no functional role.
The limits of trademark protection will continue to be tested as more companies try to distinguish their products in the crowded marketplaces. But while the sky and beyond seem to be the limit, courts will apply the two key trademark doctrines of inherent distinctiveness and functionality to bring plaintiffs’ claims back down to Earth and reign in the unfettered expansion of the trademark universe.
For much more on the Lanham Act and trademarks generally, turn to CEB’s California Business Litigation, chapter 6. Protection of intellectual property, including trademarks, is discussed in CEB’s Financing and Protecting California Businesses, chap 12. The trademark registration procedure is covered in CEB’s Internet Law and Practice in California, chap 3.
Other CEBblog™ posts you may find useful:
- 9 Reasons to Register Your Trademark
- Toymaker Clashes with Beastie Boys Over Fair Use
- Idea-Expression Dichotomy Remains Key to Copyright Protection of New Technology
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