New York is well known for many popular pizza restaurants. One restaurant in particular, New York Pizzeria, Inc. (NYPI), believes that what separates it from all the others is a distinctive taste that customers immediately recognize. According to NYPI, a unique blend of ingredients sourced from proprietary distributers creates its distinguishing flavor. And when its former president left to create a rival restaurant, Gina’s Italian Kitchen, NYPI noticed that Gina’s pizza tasted a little too familiar. That’s why NYPI filed a federal lawsuit claiming that Gina’s violated the Lanham Act by copying NYPI’s pizza flavor. But can a flavor be protected by a trademark registration?
Trademark law is about preventing consumer confusion as to the source of goods or services. Just about anything symbolizing or indicating a source of goods or services can acquire trademark rights, with some limitations for generic words or functional designs. Thus, there is a balance between protecting the goodwill behind a brand, which may indicate a particular level of quality and identify for the consumer a source, and protecting constitutional rights associated with free speech and the ability to freely engage in commerce. While trademarks typically come in the form of a brand name or logo, there are some other less common forms of trademarks like sounds or shapes. But what about a flavor? Can the taste of, for example, McDonald’s French fries, become so distinctive that it serves as a trademark to identify McDonald’s as the source of the fries?
In In New York Pizzeria, Inc. v. Syal, No. 13-335 (U.S. Dist. Ct., S.D. Tex., order entered October 20, 2014), the court compared flavor to color, which may only be enforced as a trademark if it has acquired secondary meaning – that is that consumers have come to associate a color as identifying a particular source for goods. As stated by the court, “[b]ut even then, there is another hurdle to achieving trade dress status: functional product features are not protectable.” According to the court, the flavor is a functional aspect of food and functional aspects of products cannot be trademarked. If a person was able to protect a functional element of his product via trademark registration, it would provide an unfair advantage over competitors by permitting inclusion of functional elements in the trademarked products while competitors could not.
This case demonstrates the unique balance and tension between protecting distinct product features setting a brand apart from competitors and need to allow for competition by not restricting use of functional elements. Understanding the scope of trademark protection and when and how it can be leveraged to strengthen your business is invaluable.