The question, per last fall’s story, was this: Can you establish trademark rights in a flavor? The court said, unsurprisingly, “no.” As usual, I let someone better inclined to do so do the heavy lifting first — and who better than Eric Goldman?
[A]pparently Russo’s New York Pizzeria restaurant chain–which is from Texas, not New York, despite its name–. . . sued a rival chain, Gina’s Italian Kitchen, for taste infringement. Russo’s claimed trademark rights in how its food tasted, and it said the rival chain copied that taste. Fortunately for the rival chain . . ., a federal court found Russo’s claim “half-baked” (the judge’s words, not mine). Typically, trademarks are words or logos associated with a marketplace offering, such as the Coca-Cola name or its swoosh logo. However, in limited circumstances, a product’s features (in addition to the product’s “brand”) also may be protected as trademarks when consumers view those features as signals of the product’s source.
Given the expansive view of what’s potentially trademarkable, it’s not ridiculous to think that a food’s flavor could qualify for trademark protection. However, no matter how consumers view a product feature, the feature isn’t trademarkable when it is “functional,” i.e., “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” In the case of food, flavor will almost always be functional. As this court explains:
The 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….NYPI does not allege that its supposedly unique flavoring is merely an identifier, and any such allegation would be implausible given that the flavor of pasta and pizza has a functional purpose.
Right. Good, except for Eric’s distressing repeated use of “trademark” as a verb. But, on the merits, right, yeah? It seems that way. Two practical concerns, after all, seem to militate heavily against “tastemarks.”
One, as Eric points out, is “the competitive implications if we allowed trademark protection for flavors. The first food vendor to popularize a flavor would get the perpetual rights to prevent all others from replicating the flavor.”
Another problem, as Robert Zelnick from McDermott Will & Emery LLP notes in this article, is enforceability. “It’s hard to imagine how a subtle variation in a recipe for any of those dishes could be protected as a trademark,” he says. All true, but I’ve got a hankering for more on this question of trademarks for flavors. Let’s take another look at the ingredients baked into this decision:
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.
Pull up a chair while we consider this analysis. And keep in mind that in this opinion, the court is splitting hairs. So we can do that, too. Read More…