A Texas federal court has rejected the argument that the founders of Gina’s Italian Kitchen infringed New York Pizzeria, Inc.’s (NYPI’s) trademark flavor in its Italian dishes. New York Pizzeria, Inc. v. Syal, No. 13-335 (U.S. Dist. Ct., S.D. Tex., order entered October 20, 2014). NYPI alleged that its former vice president and his business partner stole trade secrets, including recipes, and used them to infringe NYPI’s distinctive flavors and plating methods at their new restaurant, Gina’s Italian Kitchen. They allegedly obtained a franchisee’s username and password and used it to log onto NYPI’s franchisee Website, which held, among other things, recipes for NYPI’s menu items. The court refused to dismiss the claims for violations of the Computer Fraud and Abuse Act and the Stored Communications Act stemming from alleged access to the franchisee Website.

The court then addressed NYPI’s Lanham Act claims. Asserting that “no special legal rule” prevents the trademark of flavor, NYPI argued that its “specially sourced branded ingredients and innovative preparation and preservation techniques contribute to the distinctive flavor” of its products. The court compared flavor to color because trademarking a color is only allowable if it has developed a secondary meaning that identifies the product’s source in the mind of the public. “But even then, there is another hurdle to achieving trade dress status: functional product features are not protectable,” said the court, which cited a Trademark Trial and Appeal Board decision denying a pharmaceutical company a trademark in the orange flavor of its pills. “If the hurdle is high for trademarks when it comes to the flavor of medicine, it is far higher—and possibly insurmountable—in the case of food. People eat, of course, to prevent hunger. But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.” Pointing out that “NYPI is unable to cite any case recognizing a trademark in the flavor of food,” the court dismissed the “plainly half-baked” claim.

The plating of food, in contrast, may “in some rare circumstances” earn tradedress protection, the court said. “When plating is either inherently distinctive or has acquired a second meaning, when it serves no functional purpose, and when there is a likelihood of consumer confusion, it may be possible to prove an infringement claim. It is conceivable that certain well-known ‘signature dishes’ could meet this very high standard.” NYPI failed, however, to identify precisely what plating methods it claimed were protected by the Lanham Act beyond insufficiently specifying that the infringement “’includes, but is not limited to’ its baked ziti, eggplant parmesan, and chicken parmesan dishes,” the court found, so it dismissed the claim.