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Nontraditional Trademarks: The Flavor of the Month

By Erik Kahn and Patricia Werner

Recently, in a case of first impression, the Trademark Trial and Appeal Board refused to grant trademark protection to the flavor of an antidepressant tablet on the grounds that the flavor was functional and incapable of serving as a mark. In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006). The decision is a departure from the trend of extending protection to nontraditional trademarks. Although the Board left the door open to the possibility of registering flavor as a trademark, it made clear that future applicants will face significant challenges in registering such marks, including: 1) proving that a flavor has acquired secondary meaning; 2) overcoming the difficulties inherent in protecting a flavor due to the subjective nature of taste; and 3) proving that a flavor functions as a source indicator despite the fact that consumers are not exposed to a product's flavor prior to purchase.

Trademark protection in the United States was typically reserved for words, numbers, logos, and other traditional source identifiers. Gradually, however, courts recognized that a universe of things other than words and symbols qualify as trademarks because '[i]t is the source-distinguishing ability of a mark ' not its ontological status as color, shape, fragrance, word or sign ' that permits it to serve' as a trademark. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). Today, the U.S. Patent and Trademark Office ('USPTO') and federal courts recognize less conventional marks, often referred to as 'nontraditional marks,' which can include the configuration, sound, color, scent, or motion associated with a product or service. Unlike traditional word and logo marks, however, nontraditional mark owners may encounter obstacles related to functionality and secondary meaning in their efforts to protect their marks.

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