Pohl-Boskamp GmbH & Co. (“Pohl-Boskamp”), a pharmaceutical company, applied to register two sensory marks: a peppermint flavor and peppermint scent for a nitroglycerin lingual spray used to relieve angina (chest pain) that results when the heart fails to receive sufficient blood and oxygen. The medication is sprayed under the user’s tongue, widening and relaxing the blood vessels to allow for increased blood flow to the heart, thereby relieving acute pain.
The trademark examiner refused to register both marks, finding that the peppermint flavor was functional and that neither mark had acquired secondary meaning. Applicant Pohl-Boskamp appealed the denials.
The TTAB evaluated both the flavor and scent marks according to the functionality factors set forth in In re Morton-Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982) (“Morton-Norwich Factors”). In particular, the TTAB reviewed (1) the existence of a utility patent disclosing the utilitarian aspects of the design; (2) advertisements in which the designer promotes the functional aspects of the design; (3) the availability of functionally equivalent alternative designs; and (4) evidence this design was chosen for its cost-saving manufacturing process.
As both the flavor and scent marks at issue arose from Applicant’s use of peppermint oil as an ingredient in its angina spray, the functionality determination was somewhat consolidated. In reviewing the four factors, Applicant argued that it had no application or registration for a utility patent covering this particular feature, that it does not promote any functional aspect of the flavor or scent in its advertisements, and that peppermint oil is a nonactive ingredient and serves no therapeutic purpose (i.e., the product would have been taste- and odor-free, and thus the peppermint flavor did not mask any unsavory taste). This last argument was likely an attempt to distinguish the case from In re N.V. Organon, 79 U.S.P.Q.2d 1639 (TTAB 2006), where the applicant’s registration was refused for an orange-flavored antidepressant on functionality grounds because the flavoring masked an otherwise unpleasant taste.
While acknowledging that Applicant had no patent on the feature, the TTAB affirmed the examiner’s finding of functionality based on a third-party patent disclosing that peppermint oil increases the rate at which the nitroglycerin is absorbed into the body, thus reducing both the necessary dosage as well as the medicine’s side effects, including fainting and headaches. The TTAB reasoned that this third-party patent supported the conclusion that competitors denied the ability to use peppermint oil would be at a competitive disadvantage because they would be forced to either forgo the peppermint oil’s benefits entirely or, in the event of its inclusion, to take additional steps to mask its scent and taste.
The TTAB likewise affirmed the examiner’s finding that neither mark enjoyed secondary meaning and served a trademark function. While the Lanham Act recognizes protection for flavors and scents is possible, such marks can never be inherently distinctive and thus are subject to the higher evidentiary burden of demonstrating acquired distinctiveness (i.e., secondary meaning) before they are entitled to protection. The TTAB found that Applicant had not presented enough evidence to prove secondary meaning for either mark. In particular, while Applicant had used the flavor and scent for a long period of time, the examiner located evidence that a competing product used a similar peppermint flavor and scent, and thus that Applicant’s use was not substantially exclusive in the marketplace. The TTAB affirmed the examiner’s decision to give little weight to the testimonials Applicant had submitted of twenty-three doctors on the grounds they were scripted and identical. The TTAB also emphasized that as consumers are conditioned to view flavor as an attribute of an edible product rather than as a source-identifier, the burden placed on applicants to prove that a flavor or scent functions as a trademark is especially high.
This case is significant for the TTAB’s reliance upon third-party patents, rather than an applicant’s own patents, in support of a finding of functionality. Additionally, this case represents another link in the long chain of case law covering nonconventional marks and pharmaceutical trade dress, and suggesting that the burden falling on an applicant of a flavor and scent mark is a very high one.
*Eleanor Atkins is a Summer Associate at Finnegan.