Intellectual Property Law

As new products enter the marketplace, their developers are always on the lookout for ways to distinguish these products from existing or anticipated competing products. In the case of pharmaceuticals, one way to make a product stand out from the others in a highly competitive field is to give the product a unique, pleasant taste. To give the unique features of the product legal protection, can such a unique flavor be trademarked? According to a recent decision by the Trademark Trial and Appeal Board (?Board?) of the U.S. Patent and Trademark Office, the answer is ?no,? at least with respect to the flavor of a particular drug.

Organon makes a quick-dissolving antidepressant with an orange flavor, and it sought to register this flavor as a trademark for its product with the Trademark Office. The examiner denied the application on the grounds that the flavor was functional, and thus not entitled to registration under the Lanham Act, and that the flavor did not distinguish Organon?s antidepressant from other pharmaceutical products. Organon appealed to the Board, which, in a case of first impression, affirmed both of the examiner?s conclusions.

The Board began its analysis by recognizing that, under certain circumstances, scents, sounds and colors have been registered as trademarks. In that vein, the Board did not state that a flavor absolutely cannot constitute a registrable trademark. But in the case of Organon?s orange flavor for its antidepressant, the Board concluded that it was not entitled to registration for two reasons. First, the Board agreed with the examiner that the taste is functional. Specifically, the Board pointed to evidence showing that a pleasant flavor in a drug is effective in achieving increased patient compliance, which is an important functional component. Second, the Board held that consumers would not view the flavor of a pharmaceutical as a trademark, but rather an ?inherent feature of the product that would render it more appealing.? As an ?inherent feature? of the product, the flavor would not be entitled to trademark protection.

Organon may appeal to the Federal Circuit, so perhaps we have not heard the last of this. Should taste be entitled to a trademark? Under what circumstances? Let us know what you think.

Today's Blogger: Bob Sloss