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Title: U.S. Patent and Trademark Office Refuses Registration of Flavor Trademark I. Citation In re N.V. Organon, Serial No. 76467774, 79 USPQ2d (BNA) 1639 (TTAB June 14, 2006) II. Summary In a case of first impression, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office has held that the flavor orange is not registrable for use with quick-dissolving antidepressant tablets and pills. III. Legal Context This is the first case in which the Trademark Trial and Appeal Board has considered the registrability of flavor or taste as a trademark. The Board previously found other nontraditional trademarks such as sound and scent to be registrable. In re General Electric Broadcasting Co., Inc. 199 USPQ 560 (TTAB 1978) (sound of “Ship‟s Bell Clock” could be registrable for radio broadcasting services upon a showing of acquired distinctiveness); In re Clarke, 17 USPQ2d 1238 (TTAB 1990) (floral fragrance registrable for sewing thread and embroidery yarn). The Board and the Supreme Court also have found color to be registrable. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)(green-gold color used on dry cleaning press pads protectable where color had acquired distinctiveness); In re Deere & Co., 7 USPQ2d 1401 (TTAB 1988)(colors green and yellow, as applied to body and wheels of machines, were not functional and were distinctive of the goods). IV. Facts N.V. Organon applied to register “an orange flavor” as a trademark for antidepressants in quick- dissolving tablets and pills. The examining attorney refused registration on two bases: that the proposed mark is functional, and that it failed to act as a source identifier. (Opinion, 1-2) V. Analysis The Board agreed with both bases for refusal. It found that Organon‟s orange flavor was functional, and that did not serve as a source identifier. A. Functionality Turning first to the functionality refusal, the Board applied the test adopted by the Federal Circuit‟s predecessor, the Court of Customs and Patent Appeals, in In re Morton-Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982). (Opinion, 19) Morton-Norwich identified four factors as relevant to functionality: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design‟s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Id. Utility patent: Organon‟s proposed mark was not the subject of a utility patent. However, the Board found that the absence of a utility patent did not in itself avoid functionality of the orange flavor, and the Board therefore treated this factor as neutral. (Opinion, 24) Organon’s advertising: The Board found Organon‟s promotional materials, which touted the utilitarian advantages of the orange flavor, to be particularly significant. Noting that poor patient compliance in taking prescribed medicine is a major obstacle to the successful treatment of depression, Organon‟s website stated that “the pleasant orange taste” of its antidepressant tablet is an “important advantage over conventional antidepressant tablets.” Organon also explained that its tablets are designed to dissolve on a patient‟s tongue, creating a practical need for the medicine to have an appealing taste. The Board reasoned that, because the orange flavor leads to patient compliance, it indirectly increases the efficacy of the medication. (Opinion, 19-21) Availability of alternatives: The Board found that orange is consistently used as a flavor in the pharmaceutical trade, and that the evidence did not identify a significant number of acceptable alternatives to an orange flavor for antidepressants. (Opinion, 21-24) Simple or cheap method of manufacture: Nothing in the record indicated that the addition of an orange flavor resulted in a comparatively simple or cheap method of manufacturing antidepressant tablets. The Board observed that while such evidence, if available, might be probative in showing functionality, the absence of such evidence is not necessarily proof of non-functionality. As with the absence of a utility patent, the Board treated this factor as neutral. (Opinion, 24-25) The Board concluded: [T]he evidence clearly shows that the medicinal ingredients in pharmaceuticals generally have a disagreeable taste that may be masked so that patients will be more likely to take the medicine. Therefore, flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade. To allow registration of “an orange flavor” as a trademark would give applicant potentially perpetual protection for this flavor, resulting in hindrance of competition. (Opinion, 34) B. Failure to function as a trademark The Board noted the absence of any evidence showing that an orange flavor would be perceived as a trademark for Organon‟s antidepressants. Rather, the record demonstrated that an orange flavor is used in many medicines. Consumers would not view the orange flavor as a trademark, but instead would consider it only as just another feature of the medication, making it palatable. Thus, the Board concluded: Inasmuch as flavors, including orange, are a common feature of pharmaceuticals, we find that consumers would not view [Organon‟s] orange flavor as a trademark. (Opinion, 38) The Board also observed that it would have reached the same result even if Organon had applied to register a “unique” orange flavor rather than simply “an orange flavor.” “[F]lavor, including an orange flavor, is so intrinsic a feature of pharmaceuticals, that consumers will not perceive a flavor, even a „unique‟ orange flavor, as a trademark unless they have been educated to perceive it as such. Thus, any registration of a flavor requires a substantial showing of acquired distinctiveness.” Organon did not introduce evidence of acquired distinctiveness. (Opinion, 39-40) VI. Practical Significance The Board noted several practical considerations involved in the registration of flavor marks. Because flavor perception is very subjective, what an applicant claims to be a unique and distinctive flavor may not be considered as such by consumers. Indeed, the same flavor may taste different to different consumers. In the Board‟s view, examination of flavor marks and litigation at the Board could be “very problematic” given difficulties in determining how a taste might function as a trademark. The Board cited an article noting that, “because of the subjectivity of flavor perception, the risk of inconsistent results would be substantial if the PTO examined flavors for trademark protection, or if a flavor trademark owner sought to enforce his rights in court.” (Opinion, 40 n. 10, citing Nancy L. Clarke, Issues in the Federal Registration of Flavors as Trademarks for Pharmaceutical Products, 1993 U. Ill. L. Rev. 105, 131.) The Board questioned how, as a practical matter, a taste can function as a trademark. The Board observed that consumers have no access to the product‟s flavor prior to purchase. Unlike color, sound and smell, there generally is no way for consumers routinely to distinguish products by sampling them prior to purchase. The Board also expressed doubt about what could serve as an acceptable specimen of use. “Without ingesting applicant‟s antidepressant tablet or pill, there is no way to taste the purportedly „distinctive‟ orange flavor that applicant claims as its trademark.” A consumer making a purchasing decision about a prescription or over-the-counter medication will not be able to distinguish one pharmaceutical from another based on flavor.
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