Yum, That's a Good Trademark!

Over the years we have seen an impressive expansion of what the law is willing to protect as a trademark. Long gone are the days when a mark could consist solely of the words or logo on a package. From the shape of product packaging to the shape of the product itself to colors to sounds to smells, courts have recognized that in the right circumstances consumers may recognize all of these as signifying that goods or services come from a single source, i.e. are trademarks.

There does seem to be a limit, however, to how far courts are willing to go, at least for now. On October 20, 2014, the U.S. District Court for the Southern District of Texas denied New York Pizzeria's claim that the very flavor of its foods, and the way it was presented, were protectable trademarks. The court denied such protection, stating that "the flavor of food undoubtedly affects its quality, and is therefore a functional element of the product." As for the claim based on how the food was presented, the court said that while it was "conceivable" that a signature dish could be presented in a non-functional manner that acquires distinctiveness, there were insufficient details alleged as to what was claimed as protectable trade dress in this case.

The court's decision is consistent with the U.S. Trademark Office's denial in 2006 of an application to register orange flavor as a mark for pharmaceuticals, where the Office held that the flavor was functional because it made the tablet taste better and therefore increased the likelihood that patients would take their medicine. So apparently Mary Poppins does not have exclusive rights to give children their spoonful of sugar.

Trademarks are brands—just like the brand on a cow. Seeking to protect flavor as a brand is like seeking to protect the taste of the beef—"We're the only ones who can feed our cows this unique mixture of corn and chipotle peppers." Not every potential expansion of trademark rights is a good thing. Allowing such protection would not be progress, but rather only limit fair competition based on the quality of the product, especially considering that trademarks can potentially last forever. For almost anything one can imagine that flavor might be used as a mark for, the use would be functional as part of the goods themselves. Maybe we will reach the point where tennis players first taste the tennis balls to be sure they are made by their favorite manufacturer, but for now they will just have to sniff them.

The case is New York Pizzeria, Inc. v. Syal, et al. case number 3:13cv335 in the U.S. District Court for the Southern District of Texas.