Trademarks are used by their owners to identify and distinguish their goods or services from those of another. Trademarks are identifiers. We are familiar with trademarks that consist of letters, numbers, pictures, or a combination of all three, but trademark law has consistently been found to cover anything that is capable of carrying some meaning and can be used as an identifier for a trademark owner’s goods or services.
In addition to the known words and designs, trademarks have been registered or applications have been submitted for sounds, scents, flavors, product shapes, textures, light, hand gestures, and online motion marks. However, these “nontraditional” trademarks usually have a much tougher time of meeting with the Trademark Office’s strict criteria and passing a series of standard trademark tests.
But what about flavor or taste trademarks. These type mark, in particular, pose a challenge for the United States Patent and Trademark Office (USPTO).
Most flavor trademark applications are rejected due to failing to overcome the functionality doctrine expressly provided in the Lanham Act. The Act establishes that an application for registration may be refused if the trademark in question is merely functional. A product feature is functional and cannot serve as a trademark if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. When it comes to the flavor of a food, a drink, or some other edible item, for example, it would be difficult to convincingly argue that flavor is not relevant. Flavor will pretty much continually be functional.
There are even further hurdles for flavor trademarks to overcome. One hurdle is determining whether the proposed flavor can leave such a lasting impression as to evoke a reaction with the consumer, such as the Starbucks logo immediately bringing up the thought of coffee. Companies can spend a lot of time and money establishing their branded flavor, but it all depends upon the consumer. If the flavor isn’t distinguishable or doesn’t resonate with the public, it will have no chance of obtaining a federal trademark registration.
There is also the argument that trademarking flavors can inhibit competition within the field. For example, it would be unfair to competitors within the candy market if one company registered a flavor trademark for the cherry flavor used in candy.
Eli Lilly attempted to register the taste of artificial strawberries noting but was rejected, “Any manufacturer… is entitled to add the flavor of artificial strawberries to those products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the purpose of making them pleasant to taste… Moreover, the taste is unlikely to be perceived by consumers as a trademark; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product…” Similarly, an attempt to register an orange flavor for pharmaceuticals was rejected by the USPTO. As the Trademark Trials and Appeals Court pointed out, it is difficult to define how taste can act as a trademark when consumers only taste goods after purchase.
A very difficult process indeed.
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