Monday, March 04, 2013

Precedential No. 7: TTAB Affirms Refusal to Register Peppermint Flavor and Scent for Nitroglycerin Spray

The Board turned up its collective nose at Applicant Pohl-Boskamp's unpalatable attempt to register "the distinctive flavor of peppermint" and "the scent of peppermint" for pharmaceutical formulations of nytroglycerin. As to the purported flavor mark, the Board affirmed the PTO's two-pronged refusal: Section 2(e)(5) functionality, and failure-to-function. It affirmed the single refusal of the scent mark on the ground of failure-to-function. In re Pohl-Boskamp GmbH & Co. KG, 106 USPQ2d 1042 (TTAB 2013) [precedential].

Pohl-Boskamp markets a nitroglycerin spray that provides relief from chest pain or discomfort. It is administered by spraying onto or under the user's tongue. On applicant's packaging, peppermint oil is listed as an inactive ingredient.

The Trademark Act does not prohibit registration of flavor or scent marks. The Board addressed a flavor mark in In re N.V. Organon, in which registration of an orange flavor for an antidepressant drug was refused on the ground of functionality because the flavor masked the unpleasant taste of the drug. [TTABlogged here]. In In re Clarke, the Board found registrable the scent of Plumeria blossoms for thread and yarn.

Functionality of peppermint flavor: Under the Supreme Court's Inwood test, a product feature is functional if it is "essential to the use or purpose of the article or if it affects the cost or quality of the article." If functionality is established under Inwood, there is no need to inquire further into the facts in order to apply the CCPA's Morton-Norwich factors.

Nitroglycerin is odorless and tasteless, and so there is no need to mask its taste, as was the case in Organon. Examining Attorney Michael P. Keating pointed to a third-party patent [hearsay? - ed.] that stated that menthol-containing substances (including peppermint) reduce the required dosage of nitroglycerin and reduce the side effects. Even though peppermint oil is listed as an inactive ingredient in Pohl-Boskamp's product, the patent evidences that peppermint oil could improve the effectiveness of sublingual nitroglycerin spray. A competitor who desired to improve its nitroglycerin spray by adding peppermint oil might be put at a competitive disadvantage if Pohl-Boskamp had the exclusive right to market nitroglycerin spray having a peppermint flavor, because the competitor would have to avoid using peppermint oil or find a way to mask the flavor.

The Board observed that, if the third-party patent is wrong as to the benefit of peppermint oil, it was incumbent upon applicant to demonstrate same. [So much for the hearsay problem! - ed.].

The Board concluded that, based on the record evidence, because peppermint oil "imparts a flavor of peppermint ... and potentiates the effect of nitroglycerin," it affects the quality of nitroglycerin with the meaning of Inwood. Therefore, the Board affirmed the refusal to register under Section 2(e)(5).

Failure-to-Function: In Organon, the Board indicated that both flavor and scent should be treated like product designs when considering distinctiveness: i.e., neither can be inherently distinctive. The issue, then, was acquired distinctiveness. [As to flavor, since the Board affirmed the functionality refusal, the flavor mark was unregistrable anyway - ed.]. A "substantial showing" is required under Section 2(f) in order to demonstrate that a flavor or scent is registrable.

Pohl-Boskamp claimed substantially exclusive use since 1989, but it admitted that one other manufacturer uses a peppermint flavor with a spray that competes directly with applicant's product. Pohl-Boskamp pointed to its great sales success and large marketing expenditures, and it provided declarations from 23 physicians and pharmacists.

The Board found that although the period of use was substantial, the import thereof was undercut by the lack of exclusivity. Not only was there a directly competing product, but there was evidence of other anti-anginal products containing peppermint oil.

The presence of other flavored and scented pharmaceutical products in the market is likely to reinforce consumers' perception of the flavor and scent of applicant's goods as mere physical attributes of the product, rather than as indicators of the product's source.

Pohl-Boskamp's advertising materials did not promote the flavor or scent as a trademark. Applicant's website and one advertisement contained a notice in small print that the peppermint flavor and scent are trademarks of applicant, but "the inconspicuous placement, legalistic tone, and the plethora of claimed marks" made it "unlikely that these notices would have substantial impact on applicant's customers."

The sales figures provided by Pohl-Boskamp were not limited to the United States, and the advertising figures were not limited to promotion of the marks themselves, but included the promotion of "goods bearing" the mark.

As to the declarations, they addressed various types of trade dress, including the bottle shapes, the color scheme, the peppermint flavor and scent, the "touch and feel" of the bottle, and the sound of the pump spray. Each declarant asserted that each of these features was distinctive.

The testimonials are remarkable for their effort to say so much about so many different things in so few words. The declarants' willingness to vouch for the distinctiveness of so many of applicant's elements of trade dress affects the persuasiveness of these statements.

Moreover, the declarations did not squarely address the issue at hand: they merely assert that Pohl-Boskamp's product is the only one having a peppermint flavor of scent (which is controverted by the record evidence) and that each declarant is familiar with applicant's product and associates its scent with applicant alone (flavor was not addressed as to this point).

Finally, the probative value of the declarations was reduced because they are "all essentially identical in form and were clearly not composed individually."

While we note the declarants' willingness to sign their names to the precise wording set forth in the statements, we question whether the declarants would fully embrace the proposition for which the testimonials have been put forth, i.e., that each individual element of applicant's trade dress has the power of a trademark, functions to indicate that applicant is the source of the goods, and distinguishes applicant good from those of others.

The Board observed that since most substances will create sensations of flavor and scent when introduced into the mouth, "[c]onsumers are not predisposed to equate either flavor or scent with the source of the product ingested." Consequently a very substantial amount of evidence is required to prove acquired distinctiveness.

Here, the evidence of sales and promotion was equivocal, evidence of direct promotion of the purported marks was lacking, and the declarations alone were insufficient to satisfy Section 2(f). In contrast, evidence of use of peppermint scent and flavor by others tended to show that flavor and scent "are more likely to be perceived merely as attributes of ingestible products than as indicators of source."

And so the Board affirmed the failure-to-function refusals.

Read comments and post your comment here.

Copyright John L. Welch 2012.


At 9:07 AM, Blogger Pamela Chestek said...

The functionality refusal still seems to be deficient. The evidence was that menthol-containing substances are de facto functional, and the opinion says peppermint is a menthol, but I didn't see any evidence that all menthols are peppermint. I don't see how you can draw a conclusion that peppermint is de jure functional without exploring the alternatives, i.e., that the exact flavor peppermint is essential and other menthol-containing substances won't do.

At 11:52 AM, Anonymous Anonymous said...

I guess the TTAB knows more about drug efficacy than the FDA, which approved the label listing peppermint as inactive.

At 10:42 AM, Blogger Shane Curcuru said...

OK, this one also makes sense. I could see how you might want to make a more complete chain between menthol and peppermint, but it certainly seems likely there is notable evidence that some part of the peppermint oil is directly functional in some way, which pretty much puts the kibosh on this.

In terms of distinctiveness, this makes sense as well. Here I'm wondering about the larger question of: what are some potential ways applicants can show distinctiveness for these kinds of things. Would showing clear peppermint leaves on packaging, using green colors, or other marketing techniques be a good way to start showing distinctiveness?

Question: couldn't the applicant come back later to show distinctiveness for the scent (thru marketing or other market indicators), since that does not seem to have direct functionality? Or is that effectively functional because the only reasonable/inexpensive way to include the scent in the formulation would be to use peppermint oil anyway?


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