TTAB Issues Precedential Decision on Registrability of Flavors and Scents

Practical Law Legal Update 4-524-7527 (Approx. 4 pages)

TTAB Issues Precedential Decision on Registrability of Flavors and Scents

by PLC Intellectual Property & Technology

Key Litigated Issues

The key issues identified in the Trademark Trial and Appeals Board's opinion were whether the USPTO's examining attorney properly refused to register:

Peppermint flavor for nitroglycerin spray based on a functionality finding.
Peppermint flavor and scent for nitroglycerin spray because the flavor and scent failed to function as trademarks.

Background

In 2010, pharmaceutical company Pohl-Boskamp GmbH & Co. KG applied to register on the Principal Register two sensory trademarks, one for peppermint flavor and another for peppermint scent, which are used in its oral nitroglycerin spray for chest pain.

For the peppermint flavor mark, the US Patent and Trademark Office refused registration under:

Section 2(e)(5) of the Trademark Act, on the ground that the proposed mark was functional.
Sections 1, 2 and 45 of the Trademark Act, on the ground that the proposed mark did not function as a trademark for the applicant's product.

For the peppermint scent mark, the USPTO refused registration under Sections 1, 2 and 45 of the Trademark Act on the ground that the proposed mark did not function as a trademark for the applicant's product.

When the refusals were made final, applicant filed requests for reconsideration, which were denied. The applicant then appealed to the TTAB.

Outcome

The TTAB affirmed the USPTO's refusal to register the applicant's peppermint flavor mark on the ground that it was functional. The TTAB also affirmed the refusal to register the applicant's peppermint flavor mark and peppermint scent mark on the ground that each failed to function as trademarks.

Functionality Refusal - Peppermint Flavor

With respect to the refusal to register the peppermint flavor based on functionality, the applicant argued that peppermint oil had no therapeutic properties and that the peppermint flavor did not function to mask nitroglycerin's flavor, as nitroglycerin is generally odorless and tasteless.

By contrast, the examining attorney cited U.S. Patent No. 6,559,180 which provided evidence that even though peppermint oil is inactive in a spray, peppermint oil used in nitroglycerin spray could improve the spray's effectiveness.

The TTAB found that the patent evidence was sufficient to meet the examining attorney’s burden to show that the proposed mark was functional. It demonstrated that the applicant's competitors might wish to improve their sprays by adding peppermint oil and if applicant were to have the exclusive right peppermint flavored nitroglycerin spray, it would:

Place competitors at a significant disadvantage, as competitors would either have to avoid using peppermint oil or find a way to mask its taste.
Impermissibly prevent the future use of therapeutic peppermint oil by others in applicant’s field, frustrating the policies expressed in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).

Therefore, the TTAB found that the record supported the examining attorney's finding that peppermint oil potentiated the effect of nitroglycerin and affected the quality of the nitroglycerin within the functionality definition set out in Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844 (1982). Accordingly, the TTAB found that applicant’s proposed mark, the flavor of peppermint, was functional within the meaning of the Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(5) and that registration was properly refused.

Failure to Function as Marks: Peppermint Flavor and Peppermint Scent

With respect to the refusal to register the peppermint flavor and scent marks based on their failure to function as trademarks the TTAB explained that:

Flavor and scent marks can never be inherently distinctive.
An Applicant must show acquired distinctiveness to demonstrate that a flavor or scent functions as a trademark.

In support of its argument that the marks had acquired distinctiveness, the applicant stated that its use of the peppermint flavor and scent were "substantially exclusive," that its product had sold well, there had been extensive marketing and promotion, and that its proposed flavor and scent marks had acquired recognition, as demonstrated by the declarations of 23 physicians and pharmacists.

Agreeing with the examining attorney, the TTAB pointed out that there was a directly competing product with a peppermint flavor and scent, as well as other anti-anginal preparations with peppermint oil, though they were not nitroglycerine preparations. The TTAB explained that the presence of other peppermint flavored and scented pharmaceuticals in the market was likely to reinforce consumers’ perception of the flavor and scent of the applicant’s goods as mere physical attributes of the product, rather than as source indicators. The TTAB further pointed out that the applicant did not promote either the flavor or the scent of its spray as source indicator.

With respect to the declarations submitted by the applicant, the TTAB noted that they were largely identical and were not in each declarant's own words, which the TTAB stated affected their probative weight. Further, the TTAB noted that consumers were not predisposed to equate either flavor or scent with the source of the product ingested, and that the applicant bears a heavy burden of producing a very substantial amount of evidence to show that its marketing efforts had overcome this predisposition.

The TTAB found that the applicant’s purported flavor and scent marks failed to function as trademarks for applicant’s product because:

The record lacked evidence of any efforts of the applicant specifically directed toward promoting its product’s flavor and scent as trademarks.
The evidence of sales and promotional expenditures was equivocal in nature.
The customer testimonials were not alone sufficient to establish the trademark function of these features of the applicant’s products.
There was evidence showing that peppermint flavor and scent were used by others in the relevant marketplace, which tended to show that such flavors and scents were more likely to be perceived merely as attributes of ingestible products than as source indicators.

Practical Implications

This TTAB opinion offers guidance to companies evaluating whether to seek trademark registration for flavor or scent marks. Companies should consider whether the marks may be refused registration because they:

Are functional.
Do not function as source identifiers.

Prospective applicants should take note of the heavy evidentiary burden for showing that the public views the flavor or scent as an indicator of source and not merely as product attributes.

TTAB Issues Precedential Decision on Registrability of Flavors and Scents | Practical Law