Friday, June 23, 2006

Citable No. 34: TTAB Affirms Refusal of Flavor as a Mark for Pills on Grounds of Functionality and Failure To Function

In a case of first impression, the Board affirmed the PTO's refusal to register "an orange flavor" as a trademark for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills," finding the alleged mark to be de jure functional and incapable of functioning as a trademark for the goods. In re Organon N.V., 79 USPQ2d 1639 (TTAB 2006).

an orange

Examining Attorney Tracy L. Fletcher relied on numerous website and NEXIS excerpts in contending that the flavor orange "is a standard feature of orally administered pharmaceutical products and simply would not be perceived as an indicator of source." Moreover, she argued, "orange is a preferred flavor:" Applicant Organon's own website touts the advantages of the orange flavor. The Examining Attorney concluded that the orange flavor "gives an orally administered pharmaceutical product a substantial competitive advantage."

Organon maintained that its orange flavor, like the color of a pill, has no impact on the cost, quality, functionality, or effectiveness of its product. Moreover, Applicant could have selected alternative flavors such as cherry or grape.

The Board first noted that the Trademark Act sets forth a broad definition of "trademark" as "any word, name, symbol, or device, or any combination thereof" that serves as a source indicator. It does not exclude nontraditional marks. The Board pointed out, however, that although the legislative history indicates that the statutory wording was kept broad in order not to preclude protection for "color, shape, smell, sound, or configuration," no mention was made of "taste" or "flavor."

Functionality: After reviewing the pertinent Supreme Court precedents, the Board applied the CAFC's four-factor Morton-Norwich analysis. Here, the second factor was "particularly significant" -- Organon's touting of the utilitarian benefits of the orange flavor. Its website states that "poor patient compliance in taking prescribed medicine is a major obstacle to the successful treatment of depression."

"Applicant touts, no fewer than four times on its website, that its antidepressant tablet has 'a pleasant (orange) taste' and that 'the pleasant orange taste' is an 'important advantage over conventional antidepressant tablets.' Applicant's tablets and pills are designed to dissolve on a patient's tongue; consequently, there is a practical need for the medicine to have an appealing taste."

The Board reasoned that, "because the orange flavor of applicant's medication leads to patient compliance, the orange flavor indirectly increases the efficacy of the medication."

As to the third Morton-Norwich factor, "the mere fact that other designs are available does not necessarily mean that applicant's design is not functional." The question is whether those alternative flavors would perform equally well. The Board pointed out again that Organon "essentially promotes its orange flavor as better than others." Although the Board could not "definitively say that orange is the most popular flavor, it certainly would appear on the short list of most popular flavors." Therefore, the Board could not find "that there are true alternatives, or a least a significant number of acceptable alternatives."

As to the first and fourth factors, the Board found them to be neutral. The orange flavor is not the subject of a utility patent. And nothing in the record indicates that addition of the flavor results in a comparatively simple or cheap method of manufacture.

Finally, the Board relied on Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d 1120 (Fed. Cir. 1994) in concluding that registration by Organon would hinder competition by placing competitors at a substantial competitive disadvantage.

"Just as in the case of Brunswick wherein the color black did not make the outboard engines work better, applicant's orange flavor does not make the medicine instrinsically any more effective in treating depression. Rather, like the advantages of color compatability and reduction in apparent engine size afforded by the color black, applicant' orange flavor makes its antidepressant tablets and pills more palatable for patients, resulting in increased patient compliance, and thereby supplying applicant with a competitive advantage."

The Board also found applicable a 1924 Supreme Court decision involving competing pharmaceutical manufacturers who were using chocolate to color and flavor liquid quinine preparations. William R. Warner & Co. v. Eli Lilly & Co., 256 U.S. 526 (1924). There, the Court refused to find that Lilly had exclusive rights in the brown color of the preparation, and (although it did not use the term "functional) "essentially concluded that chocolate was functional."

In sum, the Board ruled that "flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade."

Failure to Function as a Mark: The record was devoid of evidence indicating that an orange flavor would be perceived as a trademark for Organon's goods, but the record did show that orange flavor is used in many medicines. The Board therefore found that "consumers would not view the orange flavor of an antidepressant tablet or pill as a trademark; rather, they would consider it only as just another feature of the medication, making it palatable."

Leaving the door open for possible registration of a flavor as a trademark in some situations, the Board observed that "any registration of a flavor requires a substantial showing of acquired distinctiveness." Organon understandably did not introduce any such evidence in connection with the subject intent-to-use application.

But if the door was left open, it may not be open very far or for very long. The Board recognized various "practical considerations" involved in registration of a flavor: for example, examination of flavor marks by the PTO would be "very problematic." Moreover, the Board wondered how as a practical matter taste would function as a trademark, since consumers would not be exposed to the mark (i.e. could not taste the medication) prior to purchase.

In any event, in the case at hand the Board affirmed the PTO's refusals to register.

Text Copyright John L. Welch 2006.

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