De gustibus non est disputandum

Russo NY Pizzeria
Russo to Judgment?

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.

Tick Tock Diner
We never close.

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. First, do we really “eat to prevent hunger”?  Now, hunger is indeed the body’s signal that is time for us to eat, which, along with drinking, is how we deliver nutrients to our bodies.  There are, of course, some people who meticulously schedule their meals with an eye toward preventing hunger.  But outside of subsistence-level cultures, most of us eat at more or less regularly scheduled times to get adequate nutrition, to provide a context for socializing and because we get pleasure from eating.

This last — the pleasure derived directly from eating — includes, though arguably is not limited to, the experience that implicates flavor. Yes, I do think about food, at once my arch-nemesis and only true friend, from time to time, but the point is particularly well developed in this article considering the neurobiology of eating, which says, in sum:

As obvious as it sounds, we eat because we’re motivated to eat, and there are many factors that can motivate us to eat.  These factors are recognized and processed by many specialized hardware ‘modules’ in the brain, and forwarded to the reward system to determine if they are sufficient cause for action.

When the court in New York Pizzeria says, therefore, that besides “prevent[ing] hunger . . . the other main attribute of food . . . is flavor,” it appears to be giving too simple an answer to the question, “What are the functions of food?” As it is, the court seems to make imprecise use of the word “flavor” to mean “the enjoyment of eating food,” which is apparently intended to include not only “flavor” but “taste.”

They’re not the same. As explained by Columbia biologist Dr. Stuart Firestein, “Taste refers to our five sensitivities — sweet, sour, salt, bitter, and umami — while flavor is a ‘hedonic’ sense involving smell, texture, and expectation” (umami link added).  Or to quote a chef, “Flavor is a combination of taste plus many other sensations and factors such as aroma, texture, juiciness, sensation or ‘feel’ of the food on the tongue and even color.”

Indeed, the distinction posited by the court between these sense and hedonic pleasures, and the fact that we eat for nutrition, is itself questionable. This is best appreciated by consideration of the “unique role” played by fat in the human diet, as explained in this treatment (citations omitted):

In addition to being the most concentrated source of dietary energy, fat contributes to the texture, flavor, and aroma of a wide variety of foods. In general, the most palatable foods are those that are both energy-dense and high in fat content. The taste, smell, mouthfeel, and hedonic properties of fat all contribute to the popular concept of fat “taste.” Fat is one reason why palatability and energy density of foods are closely intertwined. Energy density of foods is largely determined by their water and fat content.

“Functionality” in food, then, is complicated.  Does that matter?   After all, what the court ultimately said was, “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.”  Notwithstanding all the above fol-de-rol, the bottom line is that flavor — taste, pleasure, whatever — has “a functional purpose,” and hence may not be protected under trademark law. Dudley_eatingI said I’d be splitting hairs, but this is no stray hair, for functionality is the novel trademark law point of New York Pizzeria. 

While everyone has his druthers when it comes to pizza, when it comes to a novel judicial opinion about flavor trademarks, we want to see a darned good grasp on functionality, because it seems likely we will be back this way again.

After all, as the court acknowledges, there is no per se bar to protecting taste by trademark.  If, like a fragrance, a taste can be considered in the abstract from functionality — such as the non-functional floral fragrance used with sewing thread and yarn in In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. Sept. 19, 1990) —  it could work, if and “when a flavor has acquired distinctiveness, or ‘secondary meaning’—that is, when customers have learned to associate the flavor with its source.”

But still, says, the court, it’s hard to see how that could ever happen with flavoring, because that experience is part and parcel of eating food — or, it appears, eating just about anything:

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. 79 U.S.P.Q.2d 1639, at *6–13. Because medicine generally has “a disagreeable taste,” flavoring “performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade.”

Coca-Cola Host of the Highways
Commuting Host

So even where flavor has a function that is subsidiary to a product’s main purpose, if that flavor does anything useful at all it’s functional and barred from protection.  That’s even true, says the TTAB, if that subsidiary function itself is “having a taste” that cancels out another bad taste — because what if only so many flavors “work” for making the medicine go down?

That seems to really kill it, right?

You know why I asked that.  The question screams out, to me, from another point Eric makes about one of intellectual property law’s favorite natural elements — Coca-Cola:

[F]ood vendors can still rely on trade secret law to protect their recipes. Indeed, Coca-Cola has one of the most paradigmatic trade secrets of all time, its Coca-Cola formula. The problem with trade secrets is that they don’t prevent reverse engineering. As a result, if rival food vendors can independently figure out how to make an identical flavor, trade secret law won’t stop them. Interestingly, the basic recipe for Coca-Cola has been well-known for decades, but still no one has been able to figure out precisely how to replicate its taste.

Yes.  Coke isn’t perfect, but it is good like that:  Taste.  And as one physician pointed out to me, in a completely therapeutic discussion, Coke is good, very good, for a lot of things.  One of them is testing this analytical framework (probably not what he had in mind). Because the fact that Coke’s brand equity is protected less by its considerable branding savvy than by the fact that its product is essentially impossible to reproduce tells us something, doesn’t it?

It tells us that everyone wants to reproduce it, because “customers have learned to associate the flavor with its source.”

Coca-Cola has secondary meaning.  Not just the logo, the bottle, the name:  The stuff.  The taste.  The flavor.

But… function, right, boss?  Well, I don’t know!  What function would the taste of Coke serve?  Notwithstanding my doctor’s sage advice, Coke’s not really medicinal or pharmaceutical, at least not any more. Unlike the orange flavoring used for pills in N.V. Organon, Coke doesn’t taste like Coke so you can get down the Coke.  On the contrary, you have to get down the Coke (and the calories, and the gas) in order to taste — to experience the experience of consuming — Coke.  And we do it, gladly.

So is Coke’s taste functional? We’re not going to get much help answering that from the functionality formulation relied on by the New York Pizzeria court, because it evidently saw a need to make a point about the relatively high-end nature of the comestibles at issue to reach its conclusion.  Again, quoting the opinion:

[T]he 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.

Coca-Cola is not expensive or “premium” chow.  Nor is there any relationship, known or posited, between Coke’s flavor and its “quality.”  Whatever reason the court had for raising the ante on flavor as a function of food, however, it probably wasn’t necessary.  As Eric says, “In the case of food, flavor will almost always be functional.” And in the case of Coke, as it happens, that flavor function — flavor and, again, the whole pleasure complex involved in drinking it — is its only function.

St Joseph Aspirin for Children
Feverish Memories

Coca-Cola’s taste has as much acquired distinctiveness as, it seems, virtually any branded product could, though, adverting again to the idea of medicinal tastes, I doubt that I am alone among people my age in having a very distinct recollection of the flavor of what was then called St. Joseph’s Aspirin for Children.  So there’s your secondary meaning, the guts of any trademark claim.  And a great many people, including your Coke-sodden blogger, can readily identify the difference in taste between Coke and any other cola drink, seemingly addressing the “subtle variation in a recipe” concern.

Yet on consideration, despite its perfect acquired distinctiveness in the flavor category, Coca-Cola is also the paradigm, it seems, of functionality as a bar to trademark protection.

The reason is that you drink Coke because it’s Coke.  In our time and place, that’s function enough to deny a trademark protection to flavor, now matter how unlikely it is to be confused for anything else.

Ron Coleman

I write this blog.