Trademark Protection Has Its Limits – The Taste Of Baked Ziti Cannot be Protected No Matter How Delicious!!
As we have explained in many of our blog posts, a trademark, reduced to its essence, is an indicator of the source of a good. Since the advent of trademark law, creative trademark owners and their attorneys have sought to push the envelope (often successfully) by claiming trademark rights in such non-traditional things as color (think about the color brown for UPS) and sound (thing about the sound used by United Airlines).
But a recent case out of the Southern District of Texas entitled New York Pizzeria, Inc. v. Syal shows that there are limits to how far the trademark law can be stretched to offer protection to non-traditional trademarks.
The issue in the New York Pizzeria case was whether the taste and other attributes of Italian food dishes could function as trademarks. The plaintiff (a franchisor of New York Pizzeria restaurants) claimed among other things that the flavor of its Italian food dishes was entitled to protection under the trademark laws. Interestingly, the court held that there was “no special legal rule” that prevented flavor from serving as a trademark and opined that “almost anything” could serve as a trademark in an appropriate case. However, the court ultimately found that the flavor of the Italian food served in New York Pizzeria restaurants could not serve as a trademark because it was functional and could not serve as a source indicator.
Given the decision in New York Pizzeria, flavor may represent the outer limits of trademark protection. However, such a conclusion must be tempered by certain language used by the court in the New York Pizzeria case, where the court said it did not doubt that flavor could “carry meaning,” in an appropriate case, thereby suggesting that perhaps flavor could in a very special case be a trademark. It will be interesting to see whether any trademark owner ultimately can get flavor protected as a trademark.
A copy of the full New York Pizzeria decision can be found at this link: http://www.jurisnote.com/Case/new3335.pdf
An interesting article about the New York Pizzeria case in a recent edition of Forbes magazine can be found here: http://www.forbes.com/sites/ericgoldman/2014/10/22/food-flavor-cant-be-trademarked-even-if-the-baked-ziti-is-delicious/
In our July 10, 2014 blog post, we emphasized the importance of acquiring trademark rights wherever the trademark owner will use its trademark. The importance of acquiring trademark rights in different countries is clearly illustrated by the recent trademark clash between Deadmau5 and Disney.
Joel Zimmerman, the famous Canadian DJ also known as “Deadmau5”, recently sought federal trademark registration for his mouse head logo (“mau5head”) in the United States Patent and Trademark Office, and Disney filed an opposition. Disney’s opposition is based on the claim that Zimmerman’s mouse logo supposedly so closely resembles the iconic Mickey Mouse logo that use of the mau5head logo is likely to cause consumer confusion.
Do you think customers would likely be confused? Below are the two logos for your consideration.
Zimmerman’s attorney has argued that Zimmerman has been using his mouse head logo for over a decade, and holds trademarks on the logo in other countries. However, Zimmerman never sought a trademark registration for his logo in the United States. On the other hand, Disney has long owned the rights to the Mickey Mouse logo in the United States.
This trademark battle between Disney and Deadmau5 seems to have just begun. We will have to wait and see who succeeds with regard to the mouse head logo.
Nonetheless, this legal battle between Disney and Deadmau5 illustrates the importance of protecting your trademark and acquiring trademark protection in every country where you plan to use a trademark to market and sell goods or services. Furthermore, in order to avoid expensive litigation, it is important for any trademark owner contemplating sales in multiple countries to consult with trademark counsel about trademark protection.
Can any single person or business obtain exclusive trademark rights to the word “how”? That is the question posed by an ongoing trademark dispute between the well-known yogurt maker Chobani and the equally well-known author and speaker Dov Seidman.
Mr. Seidman is in the business of helping companies create more ethical cultures. He has distilled that business to a single three-letter word: how. Mr. Seidman has written a popular book entitled “How: Why How We Do Anything Means Everything” to illustrate his concepts and teachings centered around the word “how.”
Chobani recently got into the “How” business, too. The company is in the midst of an ambitious brand campaign intended to highlight the quality of its yogurt and the way it is made, including a straining process that makes it extra dense. It is built around the phrase “How Matters.” (Mr. Seidman also uses the phrase “How Matters” in some of his materials.)
Mr. Seidman is not happy with Chobani’s marketing campaign. He contends Chobani’s campaign represents a frontal assault on the brand that his company has spent 10 years building. Mr. Seidman alleges that Chobani has misappropriated his “How” trademark and he wants it to stop. He is suing the company and its advertising agency, Droga5, asking a court to order Chobani to halt the campaign because it represents an infringement on his trademark for the word “how.”
Chobani and Droga5 have responded aggressively, not only denying that they had ever heard of Mr. Seidman — let alone stolen his intellectual property — but also asking the court to cancel the trademark for “How,” saying that it’s too broad. To top it off, Chobani has filed its own trademark application for the phrase “How Matters.”
Trademark law is clear that no one can gain trademark rights in generic words or images. But whether a particular word or image truly is generic (thereby completely precluding trademark protection) or, on the contrary, whether a particular word or image, although common, can in fact serve as a trademark if the one who uses the word does enough marketing and promotion to create an association in the minds of consumers between the common word(s) and the user’s goods or services is often a difficult question to answer. The dispute between Chobani and Mr. Seidman is a good illustration of the difficulty of applying trademark concepts when common (and possibly generic) words are used as trademarks.
It will be interesting to see where on the scale the word “who” will fall. Stay tuned.
For more detailed information about the trademark dispute between Chobani and Mr. Seidman, please see this recent article in the New York Times: http://www.nytimes.com/2014/10/06/business/chobani-and-dov-seidman-wrestle-over-use-of-how-trademark.html?emc=edit_th_20141006&nl=todaysheadlines&nlid=44964334&_r=0