TRADEMARK ISSUES RELATING TO DIGITALIZED FLAVOR

Yale Journal of Law and Technology Volume 19 | Issue 1 Article 8 2018 TRADEMARK ISSUES RELATING TO DIGITALIZED FLAVOR John T. Cross University of Louisville School of Law Follow this and additional works at: https://digitalcommons.law.yale.edu/yjolt Part of the Computer Law Commons, Intellectual Property Law Commons, and the Science and Technology Law Commons Recommended Citation John T. Cross, TRADEMARK ISSUES RELATING TO DIGITALIZED FLAVOR, 19 Yale J.L. & Tech (2018). Available at: https://digitalcommons.law.yale.edu/yjolt/vol19/iss1/8 This Article is brought to you for free and open access by Yale Law School Legal Scholarship Repository. It has been accepted for inclusion in Yale Journal of Law and Technology by an authorized editor of Yale Law School Legal Scholarship Repository. For more information, please contact . Cross: TRADEMARK ISSUES RELATING TO DIGITALIZED FLAVOR TRADEMARK ISSUES RELATING TO DIGITALIZED FLAVOR John T. Cross* 19 Yale J.L. & Tech 389 (2017) Over the past three decades, most people have become accustomed to dealing with music, film, photography, and other expressive media stored in digital format. However, while great strides have been made in digitalizing what we see and hear, there has been far less progress in digitalizing the other senses. This lack of progress is especially evident for the chemical senses of smell and taste. However, all this may soon change. Recently, several groups of researchershave commenced various projects that could store odors and flavors in a digital format, and replicate them for humans. Digitalization of odors and flavors has significant potential. Most obviously, it would allow odors and flavors to be stored without degradation-and transmitted over long distances by e-mail or the internet-without the need to deal with a physical object. At the same time, digitalization could create a number of potential problems, including deceptive distortion of digital odors and flavors, as well as the misuse of well-known odors and flavors for unconnected goods and services. This article explores one subset of these potential problems: namely, those in the realm of trademark law. After discussing the state of the technology, the article explores how trademark law can respond to certain uses of digital flavors. It analyzes various trademark law issues that may arise, such as whether a party can obtain trademark rights in a digitalized flavor as well as whether others can borrow an existing flavor to market their goods or services. While the focus is on flavorwhich due to its idiosyncrasies presents the most difficult problems-many of the same conclusions will apply to odors. Because digitalizationtechnology in the realm of flavors is still very primitive, the article is predictive in nature. Nevertheless, by identifying the potential obstacles and problem areas now, the legal system may have time to react before the technology inevitably becomes feasible. * Grosscurth Professor of Intellectual Property Law and Technology Transfer, University of Louisville School of Law. The author thanks the participants at the "Intellectual Property in All the New Places" Symposium held at Texas A&M University (April, 2016), and the Eighth Annual Conference on Innovation and Communications Law hosted by The University of Eastern Finland (May, 2016), who provided helpful comments on and criticisms of drafts of this paper. Published by Yale Law School Legal Scholarship Repository, 2018 1 Yale Journal of Law and Technology, Vol. 19 [2018], Iss. 1, Art. 8 340 Trademark Issues Relating to Digital Flavor 2017 Table of Contents Introduction. ...................................... 340 I. The Technology of Flavor Synthesis and Digitalization..... 346 A. Flavor and the Sense of Taste ................... 346 B. Synthesizing and Digitalizing Flavor: The Current State of the Art. ...................................... 348 II. The Potential of Digitalized Flavor................... III. Legal Issues Involving Digital Flavors ..... 351 ......... 359 IV. Issues in Trademark Law..... .................... 362 A. Flavor as Trademark Subject Matter ..... ........ 363 1. Inability to Sample Prior to Purchase ..... ..... 365 2. Distinctiveness and Secondary Meaning................ 366 3. Functionality ....... ..... .................. 370 B. Borrowing "Real" Flavors for Use on Other Products. 377 1. Federal Trademark Law......................... 377 2. State Trademark and Unfair Competition Law..... 381 3. Should Borrowing be Actionable? ....... ........ 382 C. Diluting Existing Marks by Adding Flavors................ 383 Conclusion .................................. ...... 384 INTRODUCTION Were it not for the senses, humans would exist in isolated cocoons. Our five senses allow us to perceive the world around us. But, equally importantly, they also allow us to communicate those perceptions to each other. Our senses collectively constitute the medium by which living beings communicate about their world. Most human communication occurs through the senses of sight and sound. Anyone who has ever walked a dog, by contrast, can verify how the canine species relies more heavily on the sense of smell. Nevertheless, even we humans use the senses of touch, smell, and taste to both enhance and facilitate communication. The complete message we receive from face-to-face communication with others can be a nuanced mix of signals we receive through all five of our senses. https://digitalcommons.law.yale.edu/yjolt/vol19/iss1/8 2 Cross: TRADEMARK ISSUES RELATING TO DIGITALIZED FLAVOR Vol 19. THE YALE JOURNAL OF LAW & TECHNOLOGY 341 Of course, we regularly use technology such as telephones and e-mail as a tool in interpersonal communication. These technologies undoubtedly make interpersonal communication, especially at a distance, easier, quicker, and cheaper-although debate continues as to whether it is as effective. But in addition to communicating with other humans through technology, humans also need to communicate directly with technology. The complex computational, storage, and retrieval power of a computer is of little use if the human operator cannot direct the computer what to do, or the computer cannot communicate what it just did back to the human. Our communications with technology involve a "formatting" problem. Most information technology today is digital. Human beings, however, are "analog" devices. When we communicate with our machines, we must convert our thoughts and commands into digital format. Similarly, computers convey information to humans by converting its digital information into an output recognized by one of our senses. Because humans rely heavily on their senses of sight and sound in communication, it is easy to understand why most early developments in computer interface technology focused on those two senses.' Early computer-to-human communication was purely visual. Moreover, that visual interaction was quite limited, (...truncated)