Forbes has an interesting piece on this week’s ruling on a motion to dismiss in New York Pizzeria, Inc. v. Syal, 3:13-CV-335 (S.D. Tex. Oct. 20, 2014). Texas-based New York Pizzeria sued a rival restaurant chain in federal court for trademark infringement, contending that, as the Court puts it, “the flavor of its Italian food… [is] entitled to protection under the trademark laws.” The Court begins its analysis by noting that a mark is entitled to trademark protection “only if it distinguishes the source of a product,” and explains that “[b]ecause flavor is generally seen as a characteristic of the goods, rather than as a trademark, a flavor, just as in the cases of color and scent, can never be inherently distinctive… It is therefore only when a flavor has acquired distinctiveness, or ‘secondary meaning’—that is, when customers have learned to associate the flavor with its source—that it has any chance of serving as a valid trademark.” However, even if a flavor has acquired distinctiveness (which the plaintiff in this case failed to establish), it will not be entitled to trademark protection if the flavor is functional, because other parties will face a competitive disadvantage if a single party is allowed to monopolize a feature that “is essential to the use or purpose of the article or… affects the cost or quality of the article.” The Court then determines that “[t]he flavor of food undoubtedly affects its quality, and is therefore a functional element of the product,” opines that the hurdle of the functionality doctrine is “possibly insurmountable—in the case of food,” and further notes that, unsurprisingly, the plaintiff “is unable to cite any case recognizing a trademark in the flavor of food.” Concluding with the benchslap that “the flavor infringement claim is plainly half-baked,” the Court dismisses the trademark infringement claim. Although trademark protection is generally unavailable for food flavors, the article notes that “food vendors can still rely on trade secret law to protect their recipes” (think Coca-Cola). Read the full article here, and the Court’s opinion here.

By jeffreyw (Mmm... veggie pizza  Uploaded by Fæ) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons. — By jeffreyw (Mmm... veggie pizza Uploaded by Fæ) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from Forbes.