Acquiring a Flavor For Trademarks: There's No Common Taste in the World

Northwestern Journal of Technology and Intellectual Property Volume 8 Issue 3 Summer Article 1 Summer 2010 Acquiring a Flavor For Trademarks: There's No Common Taste in the World Amanda E. Compton Recommended Citation Amanda E. Compton, Acquiring a Flavor For Trademarks: There's No Common Taste in the World, 8 Nw. J. Tech. & Intell. Prop. 340 (2010). https://scholarlycommons.law.northwestern.edu/njtip/vol8/iss3/1 This Article is brought to you for free and open access by Northwestern Pritzker School of Law Scholarly Commons. It has been accepted for inclusion in Northwestern Journal of Technology and Intellectual Property by an authorized editor of Northwestern Pritzker School of Law Scholarly Commons. N O R T H W E S T E R N JOURNAL OF TECHNOLOGY AND INTELLECTUAL PROPERTY Acquiring a Flavor for Trademarks: There’s No Common Taste in the World Amanda E. Compton Summer 2010 © 2010 by Northwestern University School of Law Northwestern Journal of Technology and Intellectual Property VOL. 8, NO. 3 Copyright 2010 by Northwestern University School of Law Northwestern Journal of Technology and Intellectual Property Volume 8, Number 3 (Summer 2010) Acquiring a Flavor for Trademarks: There’s No Common Taste in the World By Amanda E. Compton* I. INTRODUCTION ¶1 ¶2 The adjudication arm of the United States Patent and Trademark Office (“USPTO”), the Trademark Trial and Appeal Board, hears disputes over the ownership and validity of trademarks, including trademarks that have been rejected as unregistrable by a trademark examining attorney at the USPTO. Historically, trademarks have consisted of letters, numbers, pictures, or a combination of these fundamental features.1 Section 45 of the Trademark Act defines a trademark as a “word, name, symbol, or device, or any combination thereof . . . .”2 Seemingly, the statute follows what had been the traditional concept of a trademark (words, slogans, drawings, etc.). On the other hand, the words “symbol” and “device” have been construed broadly to mean any item that a trademark owner uses in commerce to identify and distinguish his or her goods from those of another.3 These words—“symbol” and “device”—have been used as the basis for registering trademarks that are deemed “nontraditional”—in other words, anything that is capable of carrying some meaning and that can be used as a source identifier for a trademark owner’s goods or services.4 Another interpretation is that since the legislature did not exclude any subject, the statute should be interpreted to be allinclusive.5 With this in mind, the TTAB has used this language to approve color,6 sound,7 shape,8 and fragrance9 marks for registration. In 2006, in a case of first impression and the latest battle over nontraditional trademarks, the TTAB upheld a decision by the examining attorney to refuse registration of a flavor as a trademark.10 On the other hand, the TTAB continued the trend of * Assistant Professor of Law, Charleston School of Law. I would like to thank the faculty and library staff of Ohio Northern University that supported me in preparing this article, and my student research assistant, Jason Flower, 2009 graduate of ONU. I would also like to thank the editorial board of the Northwestern Journal of Technology and Intellectual Property, with special thanks to Dan Hoang. 1 Daniel I. Schloss, A New Reality: Special Problems in the Registration of Nontraditional Trademarks, 5 NO. 4 INTELL. PROP. STRATEGIST 1 (Jan. 1999). 2 Trademark Act § 45, 15 U.S.C. § 1127 (2006). 3 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995). 4 Id. 5 See id. at 162 (Justice Breyer further commented that “[s]ince human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.”) 6 In re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985) (concerning the color pink used in connection with fiberglass insulation). 7 U.S. Trademark Reg. No. 0,916,522 (sound mark registered by NBC Universal, Inc. on July 13, 1971 for use in connection with television programs). 8 U.S. Trademark Reg. No. 1,057,884 (design mark registered by Coca-Cola Company on February 1, 1977 for use in connection with soft drinks). 9 U.S. Trademark Reg. No. 2,463,044 (cherry scent mark registered by Mike Mantel on June 26, 2001 for use with synthetic lubricants for high performance racing and recreational vehicles). 10 In re N.V. Organon, 79 U.S.P.Q.2d (BNA) 1639 (T.T.A.B. 2006). 340 Vol. 8:3] ¶3 ¶4 ¶5 Amanda E. Compton allowing “nontraditional” trademarks by opening the door for the registration of flavor trademarks.11 Interestingly, the TTAB determined that after meeting a series of standard trademark tests, flavor could be protected as a trademark.12 The pertinent tests are explained in more detail below. Unfortunately for Organon, it had not met these tests. In In re N.V. Organon, the pharmaceutical company N.V. Organon (“Organon”) sought to protect the orange flavoring of its antidepressant tablet.13 The examining attorney denied the application on the grounds that the flavor, as used in connection with this product, was functional, and that the flavor did not distinguish Organon medicine from any other pharmaceutical product. Therefore, the mark was not entitled to registration under the Lanham Act.14 Seemingly, the decision would appear to be a departure from the current trend of extending protection to nontraditional trademarks.15 However, the TTAB did open the door for others to be able to make a claim for flavor as a trademark, although considerable barriers to registration still exist.16 The primary apprehension is that consumers will perceive the flavor as just another characteristic of the goods, and not as a distinctive feature of a single source product.17 Accordingly, flavors can never be inherently distinctive, and therefore, require proof of secondary meaning or acquired distinctiveness.18 The bigger question, however, is whether flavor should be protected as a trademark. This paper will briefly explore the history of allowing nontraditional trademarks, provide reasons why the TTAB denied registration of flavor as a trademark in the Organon case, and present arguments supporting why we should give careful consideration to the continued support of flavor trademarks. II. A HISTORICAL OVERVIEW OF NONTRADITIONAL TRADEMARKS ¶6 Trademarks can be traced to antiquity, where they identified the origins of certain goods, such as pottery, jewelry, or armor.19 Many of the early trademarks were limited to 11 Id. Note, however, that simply because a person or company adopts a word, design, or device as a trademark, does not make it a trademark under the law. Those items that are not inherently trademarks, like nontraditional marks, must not be, for example, descriptive, misleadingly descriptive, or functional (i.e. a necessary component to the product or services). Additionally, the item h (...truncated)