Can You Trademark a Flavor? Recent Case Highlights Interesting Trademark Question

Suppose you came up with a distinct combination of ingredients that when put together in a dish create a unique flavor. Your customers have come to know your food based simply on this flavor. You’ve decided that you want to protect the use of this flavor so your competitors don’t confuse your customers with “knock-off” dishes. But can you actually trademark a flavor to protect it?

A recent case highlighted this interesting trademark question:

PizzaNew York Pizzeria Inc v. Syal involved a pizzeria that brought a lawsuit against its former employee for allegedly breaching his employment agreement and wrongfully acquiring internal documents and recipes. New York Pizzeria alleged that the employee, Mr. Hembree, used these internal documents and recipes to create a competing restaurant, Gina’s Italian Kitchen. The case involved a variety of other claims, but I’m going to focus on the claims related to intellectual property, specifically the trademark issues. New York Pizzeria claimed that Mr. Hembree infringed its trademark in the flavor of its food, as well as the trade dress as to the plating of the food.

 Precedent Says “Almost Anything” Could be Considered a Trademark

Another case, Qualitex v. Jacobson Products, discussed that a trademark can be “…almost anything at all that is capable of carrying meaning.” The case went on to say, “the essence of a protected mark is its capacity to distinguish a product and identify its source.” So if the flavor you create carries “meaning” such that the average consumer can distinguish your food based on the flavor, then you could argue that it should be considered worthy of trademark protection, right? …Not so fast.

Secondary Meaning

One issue that would likely be a significant hurdle in this argument is attaching any sort of “secondary meaning” to the flavor—a trademark receives a secondary meaning if it is marketed in a way that consumers come to immediately associate the mark with only one producer of that particular kind of goods (not the goods themselves). These secondary meanings are required for all marks that describe your goods or services (“descriptive marks”). Because descriptive marks are not inherently distinctive, they must clear this additional hurdle to be eligible for trademark protection. A flavor would by default be a descriptive mark requiring a secondary meaning to be eligible for protection. And for a flavor to achieve secondary meaning would be very difficult (if not impossible).

Functionality

Qualitex also highlighted that you cannot trademark something that is purely functional. If limiting the use of the particular function through trademark protection would create a barrier to competition or perhaps extinguish competition altogether, then it is not eligible for trademark protection. The US Trademark Trial and Appeal Board ruled on this particular issue in Re N.V. Organon, noting that “flavoring performs a utilitarian function that cannot be monopolized without hindering competition.”

Clearly, the Qualitex and New York Pizzeria cases indicate it will be an uphill battle to try and argue for trademark protection for any flavors you create. But hey, it could be worse. At least we can sleep well at night knowing that the culinary industry will not be restricted by a slew of flavor trademarks.

Photo: Dennis Wilkinson | Flickr

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