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Trademarking Food – Pizzeria Makes Case
Court Agrees That Flavors Can Receive Trademark Protection

Anthony Cartee

Posted By:
October 27, 2014

Copyright Infringement

Trademarking Food – Pizzeria Makes Case

Trademarking Food - Pizzeria Makes CasePizzeria Makes its Case for Trademarking Food – A federal court in Texas ruled that flavors of a pizza chain’s food and its plating techniques lacked trademark and trade dress protection. The pizza chain, New York Pizzeria, Inc. (NYPI) alleged that Ryandir Syal, a restaurateur, along with other defendants, obtained NYPI’s trade secrets and additional information through a series of other illegal acts. Syal then used the information for a business in direct competition with NYPI, while allegedly infringing on NYPI’s intellectual property.

The court’s decision came after Syal made a motion to dismiss both the trademark and trade dress infringement claims under the Lanham Act, 15 U.S.C. § 1125(a), as well as three other offenses. (Read the full memorandum here)

It terms of flavor, NYPI claimed its “‘specially sourced branded ingredients and innovative preparation and preservation techniques contribute to the distinctive flavor’ of [its] products,” and because the defendants used such ingredients and techniques that they infringed and/or diluted its trademark interest in the flavors of NYPI’s food. The court agreed with NYPI that flavors could receive trademark protection, but clarified and warned that the requirements are stringent. Trademarking food is wading into murky waters.

To be protected, the mark must have “meaning,” and it must be able to distinguish the product and identify its source. Some marks are “inherently distinctive,” meaning that instead of describing the product the mark is attached to, the mark identifies the source of the product. The court said it is unlikely that flavors can ever be inherently distinctive because “they do not ‘automatically’ suggest a product’s source,” and flavor is generally seen as a characteristic of the goods, not the mark itself. As such in this case of trademarking food, flavors must acquire a “secondary meaning” to gain protection. This would occur when consumers associate the flavor with its source, rather than the product itself.

The final issue the court discussed with regard to trademarking food and its flavor, is the functionality doctrine, which prohibits trademark protection for functional features of a product. When a product feature is essential to its use or purpose, or if it affects the cost or quality of the product, the feature is functional. The court left no question that the flavor of food affects its quality, therefore making it a functional element of the product and not protectable.

Additionally, NYPI claimed trade dress infringement for the plating techniques of its baked ziti, eggplant parmesan, and chicken parmesan. Again, the plating must be either inherently distinctive or have a secondary meaning, it must not serve a functional purpose, and there can be no likelihood of consumer confusion. While the court noted that it is possible for plating to receive such protection, NYPI lost this claim on technicalities. NYPI failed to allege “which plating methods it had a protected trade dress interest in […], what makes them distinctive and nonfunctional, and what infringes them.” As such, NYPI did not present any plausible claims for the court to consider.

Contact Cartee, LC Today

If you need assistance with trademarking food or any trademark, copyright, IP issue, or related business matter, call Orange County Trademark attorney Anthony Cartee today at (714) 942-2225 or contact us online.

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