Taste as Trade-mark in the US

A ruling from the US Trademark Trial and Appeal Board (TTAB) is expected imminently on the registrability of the first taste trade-mark in the US. If the TTAB finds in favour of its registrability, this will bring the protection of taste marks in line with other non-traditional marks in the US, such as colours and scents. In November, 2002, NV Organon filed an application to register the orange flavour for its antidepressant tablets and pills. On examination, the examiner refused to register the mark for several reasons. First, the examiner held that the proposed mark was not distinctive because orange flavour was a standard feature of pharmaceutical products. In other words, the orange flavour did not function as a source indicator. Second, the examiner ruled that the orange flavour was functional, that is, it was essential to the use or purpose of the product or affected its cost or quality. The examiner pointed out that orange flavour was a preferred flavour for orally administered pharmaceutical products. It was commonly added to pharmaceutical products to make them more palatable, thereby increasing patient compliance. As a result, the orange flavour made antidepressants work better and offered a competitive advantage. Organon appealed the examiner's refusal to the TTAB. It argued that its mark was distinctive. Even though "orange" flavour was generally used in the pharmaceutical industry, not all "orange" flavour was created the same. Here, Organon was using a specific orange flavour to distinguish its antidepressants from others. In addition, Organon argued that its mark was not functional. The orange flavour did not make its antidepressants work better nor did it affect its cost or quality. The orange flavour was fanciful. In other words, the antidepressants would work and cost the same, with or without the orange flavour. Also, because pharmaceuticals came in many different flavours, choosing orange as a flavour did not add a competitive advantage. The issue of trade-mark protection for non-traditional marks is one which many countries have been grappling with. Just this year, the Canadian Intellectual Property Office (CIPO) issued a call for comment regarding its proposals to amend the Trade-marks Act to allow for registration of non-traditional marks. The decision of the US TTAB in the Organon case may have an impact on how Canada will ultimately approach taste marks. To view the file history of the Organon application, visit: http://makeashorterlink.com/?E21A1254C Summary by: Hung Nguyen