Intellectual Property Attorney

Nontraditional Trademarks: Can Flavors And Scents Be Protected?

In a recent decision issued by the Trademark Trial and Appeal Board (“TTAB” or “Board”), drug manufacturer Pohl-Boskamp GmbH & Co. (“Applicant”) was rebuffed in its attempt to register the peppermint flavor and scent of a nitroglycerin spray used to treat chest pain. The spray at issue is applied under the tongue and is used to treat “angina pectoris,” chest pain occurring when the heart does not receive sufficient blood and oxygen. According to the Applicant, the spray works by relaxing and widening blood vessels so blood can flow more easily. One of Applicant’s marks was described as “the distinctive flavor of peppermint,” while the other was described as “a peppermint scent.”

While nontraditional trademarks covering fragrances and flavors are rare, such sensory trademarks may be protected if they meet the requirements of the Lanham Act, the law governing trademarks in the United States. The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes the goods of one person from those of another and indicates their source. The Supreme Court has noted that “[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 these basic purposes.” See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164 (1995). J. Thomas McCarthy, a renowned expert on trademark law, opines that “anything that can be detected by one of the human senses should be eligible for protection as a trademark if it is used to identify and distinguish a source of goods or services.”

In practice, however, flavor and scent marks are few and far between, largely due to the difficulty in establishing that they serve as indicators of source. The TTAB previously permitted the registration of a “high impact, fresh, floral fragrance” applied to “sewing thread and embroidery yarn.” See In re Clarke, 17 U.S.P.Q.2d 1238 (TTAB 1990). In doing so, however, the Board suggested that protection would not be available for fragrances of goods which are noted for those features, such as perfume or scented household products.

With regard to flavor marks, the Board has indicated that flavors are typically perceived as a characteristic of goods, not as a source indicator. Thus, the Board has held that flavors cannot be inherently distinctive, but must become distinctive in the marketplace through substantial and continuous use in commerce in order to be protected. In addition, because the flavor of edible goods typically enhances their function as palatable things to eat, flavor will often be deemed functional and therefore not protectable as a trademark.

In this case, the TTAB held that the flavor and scent of the peppermint medication was functional because peppermint oil makes the spray more effective at treating chest pain. The Board cited a patent owned by a third party that claims that peppermint oil reduces the side effects of nitroglycerin (e.g., headaches, fainting) and decreases the dosage of nitroglycerin required. Therefore, the peppermint flavor and scent could not be protected. The Board noted that to hold otherwise would require competitors to forego using peppermint oil, a beneficial ingredient, in similar medications.

The Board also held that the peppermint flavor and scent had not acquired sufficient distinctiveness to warrant trademark protection. Applicant did not meet its heavy burden to show that consumers would equate the peppermint flavor and scent with source, as opposed to mere attributes of the product. The Board cited several competitors that also used peppermint oil in their related products as further evidence that the peppermint flavor and scent would not serve as an indicator of source.

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