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Even a quick search of the Internet discloses the public’s love of orange. In addition to the citrus fruit itself, manufacturers use orange to flavor a wide variety of products: orange candies, orange chicken, orange vodka, even, um, orange laxatives. Moreover, as any preadolescent will confirm, “orange” forms the setup for many “knock-knock” jokes. By any measure, orange functions as a daily part of our lives. In a recent holding by the Trademark Trial and Appeal Board, In re N.V. Organon, 79 U.S.P.Q.2d (BNA) 1639 (TTAB 2006), the board refused to register an “orange flavor” as a trademark for antidepressant medication in tablet and pill form, concluding that orange flavoring performs such a functional part of our lives that it could never function as a trademark. Companies have conditioned the public to routinely view words, letters and numbers as trademarks. “Nike,” “7 Up,” “IBM” and “Microsoft” have become an ingrained part of our consumer lexicon and perform the source identification function required of all trademarks. “Nontraditional” trademarks, however, perform exactly the same function. Consumers ask for the “pink” fiberglass insulation at the “orange” home improvement store. While at home watching the lion roar in the trailer to a DVD, a woman can enjoy a cola from the company with the contoured bottle, or perhaps on a Friday night after a tough week at work, a martini made with the vodka poured from the much advertised bottle from Sweden. These nontraditional trademarks have become an important part of the marketing and public recognition of the underlying products. Recognizing this source function, the U.S. Patent and Trademark Office (PTO) has granted federal trademark registration for these nontraditional trademarks. For example, in In re Owens Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), the U.S. Court of Appeals for the Federal Circuit found that the color pink as applied to fiberglass residential insulation was registrable when the applicant had proven that the public associated the color with the applicant’s product, otherwise known as acquired distinctiveness or “secondary meaning.” The board reached a similar conclusion in In re Deere & Co., 7 U.S.P.Q.2d 1401 (TTAB 1988), holding that green and yellow as applied to the body and wheels of farm machines could serve as the basis for a trademark registration. The U.S. Supreme Court in 1995 affirmed this line of cases, holding that marks consisting solely of a color were eligible for registration, provided that the color did not serve an essential practical function with respect to the product, and a relevant group of consumers had come to associate the color with the goods or services of a single entity (i.e., the mark had acquired secondary meaning). Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). Following this analytical structure, whenever a color serves a functional purpose, such as orange to improve visibility for pay phones and telephone booths (see In re Orange Communications Inc., 41 U.S.P.Q.2d 1036 (T.T.A.B. 1996)), or black for outboard engines, which minimized the size of the engines and made them easier to match to boat paint schemes (see Brunswick Corp. v. British Seagull Ltd., 35 F.2d 1527 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995)), courts have rejected trademark protection. Recognizing that � 45 of the Lanham Act, 15 U.S.C. 1127, broadly defines a trademark as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes the goods of a person from those of another and indicates its source, courts and the PTO have afforded trademark protection not just for colors, but for sounds and smells as well. For example, the board in In re Clarke, 17 U.S.P.Q.2d 1238 (TTAB 1990), overturned the trademark examiner’s final refusal to register “a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” for “sewing thread and embroidery yarn,” finding that scent could, and indeed did, perform a source identification function for the applicant’s products. Following the holding in In re Clarke, the PTO has permitted registration of a strawberry scent for “lubricants and motor fuels for land vehicles, aircraft, and watercraft” (Registration No. 2596156); vanilla for “office supplies, namely, file folders, hanging folders, paper expanding files” (Registration No. 3143735); and bubble gum scent for “oil based metal cutting fluid and oil based metal removal fluid for industrial metal working” (Registration No. 2560618). The PTO has also granted federal registrations for sounds, including the well-known NBC chimes (Registration No. 0523616), the sound of a wildcat growling for “insurance brokerage and administration services” (Registration No. 3020512), and “a rapid series of chime-like musical notes . . . comprising a progression of the musical notes C, D, F, G, C, and the combined notes A and D” for “providing multiple user access to computer networks” (Registration No. 2799689). Given the broad language of � 45 of the Lanham Act, and the expansive positions the PTO and courts have taken in favor of registration for nontraditional marks, an observer might wager that it was only a matter of time before a federal trademark registration was granted for a flavor or taste. Yet, in a case of first impression, the board, in In re N.V. Organon, not only affirmed the refusal of the PTO to grant a registration for orange flavor for an antidepressant, but it also cast doubt on whether any flavor or taste would ever be entitled to a federal registration. The facts behind ‘Organon’ In 2002, N.V. Organon, a corporation based in the Netherlands, filed an application in the PTO for “an orange flavor” as a trademark for “pharmaceuticals for human use, namely, antidepressants in quick dissolving tablets and pills.” The trademark examiner refused registration on two bases: first under �� 1, 2 and 45 of the Lanham Act, 15 U.S.C. 1051, 1052 and 1127, on the ground that the flavor orange neither identified nor distinguished the goods of Organon from those of others and, thus, did not act as a source identifier; and second, under � 2(e)(5) of the Lanham Act, 15 U.S.C. 1052(e)(5), on the ground that the matter sought to be registered was functional. More specifically, the trademark examiner stated that orange flavor is a common and preferred additive to orally administered pharmaceuticals to render the products more palatable, which increases patient compliance. Because of the frequency of this use by different companies, consumers would perceive the flavor not as a trademark indicating source, but rather as simply a feature of the product. With respect to the functionality of the flavor orange, the trademark examiner pointed to excerpts from Organon’s Web site touting the advantages of the orange flavor of its pharmaceuticals. That is, the flavor orange made the antidepressants work better because it increased the patient’s willingness and ability to take the prescribed medication. The trademark examiner concluded that the orange flavor gave an orally administered pharmaceutical product a competitive advantage, and that giving the applicant exclusive rights to the flavor would place competitors at a substantial competitive disadvantage. When the refusals were made final, Organon appealed to the board. Unfortunately for Organon, it fared no better with the board than it had with the trademark examiner. The board commenced its analysis by examining the functionality basis for rejection, observing that the Lanham Act had been amended expressly to provide that an application may be refused registration if the proposed mark “comprises any matter that, as a whole, is functional.” 15 U.S.C. 1052(e)(5). As the Supreme Court had explained in Qualitex, the functionality doctrine was intended to maintain the proper balance between trademark law and patent law and prevent companies from obtaining monopoly protection for functional features of products forever: “The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the invention.” 514 U.S. at 164. To determine the functionality of Organon’s orange flavor, the board applied the four factors enumerated by the Court of Customs and Patents Appeals (the predecessor to the Federal Circuit) in In re Morton-Norwich Products Inc., 671 F.2d 1332 (CCPA 1982): the existence of a utility patent disclosing the utilitarian advantages of the design; advertising materials in which the originator of the design touts the design’s utilitarian advantages; the availability to competitors of functionally equivalent designs; and facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Examining those factors, although Organon did not own a patent or patent application for the orange flavoring, and there was no evidence the orange flavoring made the antidepressant tablet work better or affected its cost or quality, the board nevertheless found that its analysis of the Morton-Norwich factors supported a finding of functionality. Specifically, the board focused its attention on Organon’s Web site, which touted that the “pleasant orange taste” of its products provided an “important advantage over conventional antidepressant tablets” because the orange flavoring masked an inherent bitterness found in many therapeutic agents, thereby increasing compliance and, indirectly, efficacy. The board then dismissed the applicant’s argument that alternative flavors such as cherry or grape existed as alternative flavorings, because “it is possible that not all of these flavors would complement an antidepressant tablet or pill, either because no patient (particularly adults) would swallow such a flavor, or more importantly, because the flavor might not effectively work with the other ingredients.” Finally, and perhaps most importantly, the board expressed its significant concern that permitting registration by Organon would place other drug companies at a substantial competitive disadvantage. Turning to the question of whether Organon’s mark functioned as a trademark, the board posed the question: Would consumers perceive the “orange flavor” sought to be registered as a source indicator or merely as a flavor of the pharmaceutical? The board decided the second option was more likely, noting that the evidence in the case supported a finding that drug companies frequently flavored medications to make them palatable, and the record contained no evidence that consumers recognized Organon’s orange flavor as a trademark. The board affirmed the trademark examiner’s rejection of the application on the ground of functionality. Having dispatched with the application at issue, and perhaps most notably for future applicants seeking to register taste or a flavor as a trademark, the board concluded its opinion by expressing a concern over how not just Organon’s application for orange flavor, but any application for taste would, as a practical matter, function as a trademark. Unlike color, sound and smell, the board explained, with flavor marks, consumers cannot distinguish products by sampling before making a purchase. Consequently, consumers would not have exposure to a flavor or taste before purchase. The board further expressed concern over whether suitable specimens could ever be found in taste trademark cases. Looking ahead In light of the board’s strongly worded decision, and Organon’s abandonment of its application without an appeal to the Federal Circuit (see Application Serial No. 76467774), future applicants are left to question whether to try to register a flavor or taste in the PTO and, if so, how to maximize the chances of prevailing in a decision that almost certainly will be heard by the board before a registration issues. A few final thoughts and observations. First, nontraditional trademarks have always faced a more difficult road to registration. In comparison to their more traditional word and logo cousins, color, product configuration, sound and smell trademark applications routinely face heightened scrutiny from trademark examiners and the board. Given the time and expense required to survive this scrutiny, a patent may be less expensive to obtain than a trademark, and serve as more appropriate protection. Potential applicants should thus carefully weigh their intellectual property options before deciding to pursue a taste trademark registration. Second, the PTO has always expressed significant reservations with regard to nontraditional trademark application areas, and only accepted color and smell marks after courts directed them to do so. Indeed, if one reviews the objections raised by the board to any registrations for taste, they mirror in many ways the objections that the PTO initially raised to sound, scent and color applications. In the right cases, in which taste does not perform a function in association with the underlying product, or give the owner significant competitive advantages, courts may find that taste can function as a trademark within the meaning of the broad statutory language of � 45 of the Lanham Act, 15 U.S.C. 1127. Third, to receive a federal registration for a taste mark, an applicant must strategically plan to survive the analysis imposed by Morton-Norwich. An applicant cannot file or own a patent for the claimed flavor, the applicant cannot promote any utilitarian feature served by the flavor, and alternative flavors or tastes must be available for competitors. Although a trademark registration for an orange-flavored edition of The National Law Journal may or may not be in the immediate future, for other applicants of tastes and flavors that survive the Morton-Norwich analysis and function as trademarks, notwithstanding the outcome in In re N.V. Organon, federal trademark registration for taste may become available. Michael D. Hobbs Jr. is a partner at Atlanta-based Troutman Sanders. He is actively involved in all types of intellectual property registration, licensing and litigation throughout the United States and internationally.

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