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/
We recently read an excellent article by Steve Olenski in the March 28, 2014 edition of Forbes magazine discussing the six rules that brand owners need to follow for their trademarks. We highly recommend Steve’s article, which can be found at this link: http://www.forbes.com/sites/steveolenski/2014/03/28/6-things-your-brand-needs-to-know-about-trademarks/
As reflected in our prior posts in this blog, Steve’s posts are right on the money. We cannot emphasize that these are the six things that brand owners — and really anyone involved with trademarks — MUST DO:
1. Work with an attorney.
2. Run a trademark search before adopting a trademark.
3. Don’t waste money on weak trademarks.
4. Always use a marking notice with your trademarks.
5. Investigate infringement before sending a cease & desist letter.
6. Keep future expansion possibilities for your trademark in mind.