The opinion
THIS DISPOSITION IS
CITABLE AS PRECEDENT
Hearing: OF THE TTAB
December 7, 2005 Mailed: 6/14/06
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re N.V. Organon
________
Serial No. 76467774
_______
Joan M. McGillycuddy, James E. Rosini, Michelle Mancino
Marsh, and Justin M. Kayal of Kenyon & Kenyon for N.V.
Organon.
Tracy L. Fletcher, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Quinn, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by N.V. Organon, a
corporation organized under the laws of The Netherlands, to
register “an orange flavor” as a trademark for
“pharmaceuticals for human use, namely, antidepressants in
quick-dissolving tablets and pills.”1 No drawing was
1
Application Serial No. 76467774, filed November 18, 2002,
originally based on both Section 1(b) of the Act, alleging a bona
fide intention to use the mark in commerce, and Section 44 of the
Act, claiming a right of priority under Section 44(d).
Applicant, in a paper filed February 25, 2004, deleted the
Section 44 basis, electing to proceed with the application based
solely on an intention to use the mark in commerce.
Ser No. 76467774
submitted because an applicant is not required to submit a
drawing if the mark consists only of a sound, scent, or
other completely non-visual matter. For these types of
marks, the applicant must submit a detailed description of
the mark. Trademark Rule 2.52(e); and TMEP §807.09 (4th ed.
2005). The examining attorney accepted the following
description: “This trademark application is for an orange
flavor.”
The examining attorney refused registration on two
bases, namely, (i) under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, on the
ground that the matter sought to be registered neither
identifies nor distinguishes the goods of applicant from
those of others and, thus, does not act as a source
identifier; and (ii) under Section 2(e)(5) of the Trademark
Act, 15 U.S.C. §1052(e)(5), on the ground that the matter
sought to be registered is functional.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney submitted briefs.2
2
Applicant, for the first time in its appeal brief, referred to
two third-party “registrations” for color marks, but gave neither
the registration numbers nor any information about the marks and
the goods/services listed in the registration(s). The examining
attorney objected to applicant’s attempt to introduce this
evidence. Applicant, in its reply brief, “apologizes for a
typographical error in its Appeal Brief that resulted in
referring to Astra Zeneca trademarks on purple colored pills
without providing the registration numbers in its Appeal Brief.
2
Ser No. 76467774
Applicant’s counsel and the examining attorney appeared at
an oral hearing held before the Board.
Examining Attorney’s Arguments
The examining attorney maintains that the proposed
mark consists of nondistinctive matter that does not
function as a mark. The examining attorney states that the
proposed mark “appears to be incapable of distinguishing
the applicant’s goods from those of others since the flavor
orange is a standard feature of orally administered
pharmaceutical products and simply would not be perceived
as an indicator of source.” (Appeal brief, unnumbered p.
3). According to the examining attorney, orange flavor is
a common feature of pharmaceutical products and, in this
Applicant was referring to Reg. No. 2806099 and Serial No.
76467774.” (Reply Brief, p. 1). Applicant further indicated
that it would furnish photocopies of the registration(s) if
necessary.
Initially, we do not understand applicant’s reference to
application Serial No. 76467774, given that this number
identifies its own application involved herein. In any event,
Trademark Rule 2.142(d) provides that the evidentiary record in
an application should be complete prior to the filing of the ex
parte appeal to the Board. Additional evidence filed after
appeal normally will not be considered. TBMP §1207.01 (2d ed.
rev. 2004). Further, to properly make a third-party registration
of record, a copy of the registration, either a copy of the paper
USPTO record, or a copy taken from the electronic records of the
Office, should be submitted. Mere listings of registrations are
not sufficient to make the registrations of record. TBMP
§1208.02 (2d ed. rev. 2004). Accordingly, applicant’s attempt to
introduce the third-party registration(s) is untimely and
improper, and this evidence has not been considered in reaching
our decision. We hasten to add, however, that even if
considered, this evidence, involving a registration for color,
clearly does not compel a different result in this appeal.
3
Ser No. 76467774
connection, she submitted numerous excerpts from websites,
including applicant’s, as well as excerpts of articles
retrieved from the NEXIS database. The evidence shows, the
examining attorney contends, that orange flavor is commonly
added to orally-administered pharmaceutical products to
render the products more palatable, thereby increasing
patient compliance, and that orange is a preferred flavor
for these pharmaceuticals. With respect to the
functionality of the flavor orange, the examining attorney
points to excerpts from applicant’s website touting the
advantages of the orange flavor of its pharmaceuticals, and
the examining attorney asserts:
Thus, the flavor orange is essential to
the use or purpose of the product or
affects the cost or quality of the
product because it is a common favorite
among consumers and the use of orange
flavoring makes taking the applicant’s
antidepressant tablet easier. What’s
more, the applicant’s tablets and pills
are designed to quickly dissolve in the
mouths of patients who are unable or
prefer not to swallow pills whole.
Thus, there exists a practical need for
the medicine to have an appealing taste
since the medicine must remain in the
mouth for a period of time. The flavor
orange makes the applicant’s
antidepressants work better because it
increases the patient’s willingness and
ability to take the prescribed
medication. (Appeal Brief, unnumbered
p. 7).
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Ser No. 76467774
The examining attorney concludes that the orange flavor
gives an orally administered pharmaceutical product a
competitive advantage, and that giving applicant exclusive
rights to the flavor would place competitors at a
substantial competitive disadvantage.
Applicant’s Arguments
Applicant, in urging reversal of the refusals, argues
that “[a]lthough flavor as a trademark may be non-
traditional, it is certainly entitled to trademark
protection as long as it operates as a trademark, just as
color and scent are entitled to trademark protection if
they operate as a trademark.” (Appeal Brief, p. 1).
Applicant asserts that its product was successful even
before flavoring, and that doctors, when prescribing
applicant’s antidepressant drug, never consider the issue
of palatability of the drug. Applicant recognizes that the
orange flavor, by its nature, will add a taste to the drug,
but applicant asserts that it “chose and is using their
distinctive ‘orange flavor’ to distinguish its product
rather than for its flavor.” (Appeal Brief, p. 3).
Applicant maintains that its orange flavor does not make
the pharmaceutical work better or impact its cost or
quality; rather, according to applicant, the orange flavor
is fanciful in that the pharmaceutical, with or without the
5
Ser No. 76467774
orange flavor, would be prescribed the same, work the same,
and cost the same. Applicant also points out that it could
have selected alternative flavors such as cherry or grape
for its antidepressant. Applicant contends that the
function of the product is solely to work as an effective
antidepressant in humans, and that the orange flavor does
not affect the functionality of applicant’s drug.
Applicant likens this appeal to cases dealing with colored
capsules for pharmaceuticals wherein the color, applicant
argues, is not functional in the sense that neither color
nor flavor enhances the efficacy or the therapeutic effect
of the drugs or aids in the processing thereof.
Applicant also contends that its particular orange
flavor is distinctive, that not all orange flavors taste
the same, and that applicant’s orange flavor is not used by
any other pharmaceutical entity; thus, applicant maintains,
the examining attorney’s evidence showing that the flavor
orange has been used in drugs is not relevant to the issue
herein concerning whether the specific orange flavor
designed by applicant is a source identifier. Applicant
states that, to make the specific orange flavor of
applicant’s product, the orange flavoring ingredients must
be added in amounts different from those used in other
products. Applicant submits that if one were to sample
6
Ser No. 76467774
each of the orange-flavored pharmaceuticals referred to in
the examining attorney’s evidence, “one could distinguish
the various types of orange flavors and certainly would not
find that all the flavors were identical.” (Reply Brief,
p. 4).
The Evidentiary Record
The record includes the following excerpts of articles
retrieved from the NEXIS database offered by the examining
attorney which discuss the pharmaceutical industry’s
practice of adding flavoring and, in many cases, orange
flavoring to pharmaceutical products:
Eliminating the “Yuck” Factor
Pharmaceutical firms--recognizing that
the word yuck was born shortly after
the first cave children were given
castor oil--have been making strides in
the taste department. With so many
over-the-counter medicines on the
market, they’re pushing flavor perhaps
as much as they’re pushing a medicine’s
ability to cure what ails you. Fruit
is in: orange-flavored, lemon-
flavored, cherry flavored.
(Los Angeles Times, February 16, 1993)
These days, pharmacists can take a
bitter pill and turn it into a spoonful
of sugar, or cherry, or orange
Creamsicle. Pharmacists can safely
flavor prescription and over-the-
counter medicines in liquid, powder and
pill forms.
(Fort Worth Star-Telegram (TX),
February 9, 2002)
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Ser No. 76467774
Johnson & Johnson Inc., which earned a
name as the ‘anti-aspirin’ company in
its years of marketing Tylenol, is
repositioning its orange-flavored St.
Joseph children’s aspirin as a heart
medicine for adults.
(Wall Street Journal, April 4, 2002)
Jewell-Osco said all 225 of its
pharmacies now offer FLAVORx, a
prescription flavoring designed to make
unpleasant tasting medicine palatable
to children and others. There are more
than 40 flavors of FLAVORx, including
grape, orange, banana, bubblegum, root
beer, blueberry, butterscotch,
chocolate, mint, watermelon,
peppermint, licorice and lemon, the
company said.
(Chicago Tribune, April 5, 2001)
Flavored medications are nothing new,
but the quality of flavorings
is...“Kids wouldn’t finish their
medicine and parents would give up,”
Kramm said. “Normal compliance is
about 50 to 55 percent with children.
With Flavorx it’s about 90 percent.”
(St. Cloud Times (MN), September 2,
2001)
Palatable Prescriptions. Pharmacists
revive compounding to help kids with
bad-tasting medicine.
Some of the renewed interest in
improving the taste of children’s
medications owes to Washington, D.C.,
pharmacist Kenny Kramm. Out of the
necessity of finding a way to induce
his daughter, who suffers a seizure
disorder, to take her medications,
Kramm took up as his cause celebre
creating confections.
(The Times Union (Albany, NY), October
17, 2000)
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Ser No. 76467774
No more icky taste...Taste-ful product
makes medicine easier to swallow...The
6-year-old said that Flavorx-flavored
medicine would “be cool,” and that he
would like medicine with orange
flavoring--his favorite.
(The Herald-Sun (Durham, NC), August
23, 2000)
Annapolis pharmacist Dave Posner used
to frequently advise parents how to
make medicine palatable without
influencing a medicine’s potency. Now,
however, he can offer parents a choice
of 42 flavors, including orange and
bubblegum, that make it easier for his
youngest patients to swallow.
(Capital (Annapolis, MD), January 14,
1999)
Medicine Needs Good Taste or It Goes to
Waste.
“Kids are interested in very strange
flavors right now,” he says, predicting
that the next hip flavor for children’s
medicine will be something like “blue
raspberry,” a combination blueberry and
raspberry. Meanwhile, adults lean
toward citrus flavors, Zick says.
Lemon and orange with honey are big
sellers in over-the-counter medicines.
Parents who serve on manufacturers’
tasting panels often say they want
tasty children’s medicines so their
kids won’t bolt when it’s time for the
next dose. Adults are seeking efficacy
from (their own) medicines.
(Orlando Sentinel (FL), November 16,
1993)
Everything old is new again!...The
process by which older drugs are
tweaked to make them more attractive is
called “reformulation.”...Bristol-
Myer’s Squibb’s ddl (Videx) has also
gone through its share of
reformulations. First the size of the
9
Ser No. 76467774
100 mg chewable tablets was decreased
and infused with a more tolerable
mandarin orange flavor.
(ACRIA Update, Vol. 10, No. 2, Spring
2001)
The maker reports 70% of patients in a
clinical trial preferred the drug [for
migraine pain] to conventional tablets;
80% liked the orange flavor.
(Daily News (NY), July 30, 2001)
The examining attorney also introduced printouts from
applicant’s website to show that applicant touts the taste
of its product. The website states, in pertinent part, the
following:
Depressed patients prefer and are more
likely to take fast-dissolving
antidepressant tablets in preference to
conventional formulations.
Results from a survey show that more
than seven of ten medical professionals
believe that a fast dissolving
antidepressant tablet will improve poor
patient compliance--one of the main
obstacles to the successful treatment
of depression. And more than half said
that greater discretion of
administration and pleasant taste were
important advantages over conventional
antidepressant tablets...Remeron®SolTab
dissolves on the tongue in just a few
seconds, can be taken without water and
has a pleasant orange taste. This
novel formulation, which became
available in the United States 17
months ago, is already proving popular.
(emphasis added).
Poor compliance is a major concern in
the treatment of depression. Between
30 and 68% of depressed patients
10
Ser No. 76467774
discontinue treatment within one month
significantly increasing their risk of
relapse...Remeron SolTab was introduced
by Organon to offer the unique
advantages of Remeron in a more
patient-acceptable formulation to
increase the ease and convenience of
therapy and ultimately enhance patient
compliance. Unlike all other
antidepressants, which must be
swallowed whole, Remeron SolTab
dissolves on the tongue in just a few
seconds, has a pleasant (orange) taste
and can be taken without water.
(emphasis added).
Fast-dissolving tablet technology, as
applied for Remeron SolTab, will make
the patient feel less medicated due to
its ease of use. It can be taken
easily without water and has a pleasant
taste. All these factors are
particularly important in the context
of depression and may therefore improve
compliance. (emphasis added)
The record also includes numerous excerpts from the
websites of other parties showing that orange flavorings
are used in connection with a variety of pharmaceutical
products, including cough drops, vitamins, and herbal
medications. The following are just three examples of such
use: “Multi-vitamin syrup with orange flavor has good
taste, and easily taken.” (www.merck.com); “[t]hese
refreshing flavored Herb Throat Drops...offer you the
distinctive taste of Orange-Spice...It’s just another
tasty, refreshing and soothing way to help you relieve your
sore throat naturally.” (www.mothernature.com); and
11
Ser No. 76467774
“Diabesity Management Glucose Tablets. Natural Orange
Flavor. Enjoy D-Care Glucose Tablets when you need a great
tasting, fast-acting energy lift.” (www.puretek.com).
The website of Flavors of North America, Inc.
indicates that this entity is in the business of
manufacturing and selling flavors for use in
pharmaceuticals. The website states that flavors are an
important feature of pharmaceuticals, and that “[w]e have
personnel specifically trained in the flavoring problems
that arise from the difficult taste profiles of the
medicaments and expedients used.” It advertises that
flavors are available for cold and cough preparations,
analgesic products, antacids, ethical liquids and tablets,
and vitamin and mineral preparations. The flavors act,
according to the website, as bitterness modifiers, masking
agents and sweetness enhancers. The website indicates that
“[b]itter principles in healthcare products are a real
challenge since most therapeutic agents are alkaloids that
are inherently bitter” and that “[t]here are two ways at
this time we can lessen its effects in a product--mask it
or modify it long enough to ingest the product.” The
flavorings “are meant to be used to cover over inherent
undesirable aspects of a product’s taste profile,” hiding
bitterness, chalkiness, sourness and harsh metallic notes.
12
Ser No. 76467774
The website lists orange as one of the flavors consistently
used for various types of pharmaceuticals.
Flavor as a Trademark
This appeal presents a case of first impression. In
the past, the Board has considered the registrability of
“nontraditional” trademarks such as sound3 and scent.4 And
the Board, the Federal Circuit and the Supreme Court have
had occasion to consider the registrability of color.5
This is, however, the Board’s first opportunity to consider
the registrability of flavor or taste as a trademark.
At the outset, we acknowledge that the Trademark Act
sets forth a broad definition of “trademark,” essentially
encompassing nontraditional trademarks by not excluding
them. Section 45 of the Trademark Act, 15 U.S.C. §1127,
3
In re General Electric Broadcasting Co., Inc., 199 USPQ 560
(TTAB 1978) [sound of a “Ship’s Bell Clock” found not inherently
distinctive, but would be registrable upon a showing of acquired
distinctiveness as a service mark for radio broadcasting
services].
4
In re Clarke, 17 USPQ2d 1238 (TTAB 1990) [“a high impact,
fresh, floral fragrance reminiscent of Plumeria blossoms” found
registrable for “sewing thread and embroidery yarn”].
5
See, e.g., Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,
34 USPQ2d 1161 (1995) [green-gold color used on dry cleaning
press pads found protectible as a trademark where the color had
acquired distinctiveness]; In re Owens Corning Fiberglas Corp.,
774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) [the color pink as
applied to fibrous glass residential insulation registrable where
the evidence showed the color had acquired distinctiveness]; and
In re Deere & Co., 7 USPQ2d 1401 (TTAB 1988) [the colors green
and yellow, as applied to the body and wheels of machines,
respectively, not barred from registration on the basis of
functionality; evidence held to establish that the colors had
become distinctive of the goods].
13
Ser No. 76467774
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 their source.6 The United States Supreme
Court, in deciding the registrability of color as a
trademark, noted that the statutory language describes the
universe of things that can qualify as a trademark “in the
broadest of terms.” Qualitex Co. v. Jacobson Products Co.,
34 USPQ2d at 1162. The Court went on to state that
“[s]ince human beings might use as a ‘symbol’ or ‘device’
almost anything at all that is capable of carrying meaning,
this language, read literally, is not restrictive.” Id. at
1162. The Court’s view is that “[i]t is the source-
distinguishing ability of a mark – not its ontological
status as color, shape, fragrance, word, or sign – that
permits it to serve” the basic purposes of a trademark.
6
The Senate Report on the Trademark Law Revision Act of 1988
indicates that the amendments to this section kept the words
“symbol, or device” with the intention “so as not to preclude the
registration of colors, shapes, smells, sounds or configurations
where they function as trademarks.” S.Rep.No. 100-515, at 44,
100th Cong., 2d Sess. (1988). See also The United States
Trademark Association Trademark Review Commission Report and
Recommendations to USTA President and Board of Directors, 77 TMR
375, 421 (1987)[recommending that “the terms ‘symbol, or
device’...not be deleted or narrowed to preclude registration of
such things as a color, shape, smell, sound, or configuration
which functions as a mark.”]. We note in passing, however, that
any reference to “taste” or “flavor” functioning as a trademark
is absent from these reports.
14
Ser No. 76467774
Id. at 1163.
It is against this backdrop that we consider the
registrability of applicant’s “orange flavor” as a
trademark for pharmaceuticals.
Functionality
We begin by addressing the question of functionality.
The Trademark Act was amended expressly to provide that an
application may be refused registration if the proposed
mark “comprises any matter that, as a whole, is
functional.” Section 2(e)(5) of the Trademark Act, 15
U.S.C. § 1052(e)(5).
The Supreme Court has addressed the issue of
functionality in cases both before and after the statutory
change. The Court has stated “[i]n general terms, a
product feature is functional, and cannot serve as a
trademark, if it is essential to the use or purpose of the
article or if it affects the cost or quality of the
article.” Qualitex Co. v. Jacobson Products Co., 34 USPQ2d
at 1163-64, quoting Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n. 10
(1982). A functional feature is one the “exclusive use of
[which] would put competitors at a significant non-
reputation-related disadvantage.” Qualitex Co. v. Jacobson
Products Co., 34 USPQ2d at 1164. See TrafFix Devices Inc.
15
Ser No. 76467774
v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001,
1006 (2001).
The functionality doctrine is intended to encourage
legitimate competition by maintaining the proper balance
between trademark law and patent law. As the Supreme Court
observed in Qualitex Co. v. Jacobson Products Co., Inc., 34
USPQ2d at 1163-64:
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
innovation. If a product’s functional
features could be used as trademarks,
however, a monopoly over such features
could be obtained without regard to
whether they qualify as patents and
could be extended forever (because
trademarks may be renewed in
perpetuity). That is to say, the
Lanham Act does not exist to reward
manufacturers for their innovation in
creating a particular device; that is
the purpose of the patent law and its
period of exclusivity. The Lanham Act,
furthermore, does not protect trade
dress in a functional design simply
because an investment has been made to
encourage the public to associate a
particular functional feature with a
single manufacturer or seller.
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Ser No. 76467774
The Federal Circuit, our primary reviewing court,
looks at four factors when it considers the issue of
functionality: (1) the existence of a utility patent
disclosing the utilitarian advantages of the design; (2)
advertising materials in which the originator of the design
touts the design’s utilitarian advantages; (3) the
availability to competitors of functionally equivalent
designs; and (4) facts indicating that the design results
in a comparatively simple or cheap method of manufacturing
the product. In re Morton-Norwich Products, Inc., 671 F.2d
1332, 213 USPQ 9, 15-16 (CCPA 1982). See also Valu
Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d
1422, 1426 (Fed. Cir. 2002).
The Morton-Norwich factors provide a framework with
which to evaluate the evidence relating to functionality.
Accordingly, we now turn to consider the facts in evidence
that are relevant to the Morton-Norwich factors.
The second Morton-Norwich factor, namely applicant’s
promotional materials touting the utilitarian advantages of
the orange flavor, is particularly significant in assessing
functionality in this case. See In re Bose Corp., 772 F.2d
866, 227 USPQ 1 (Fed. Cir. 1985); and In re Gibson Guitar
Corp., 61 USPQ2d 1948 (TTAB 2001). See also 1 J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition, §
17
Ser No. 76467774
7:74 (4th ed. 2006) [“If a seller advertises the utilitarian
advantages of a particular feature, this constitutes strong
evidence of functionality.”]. Although the application is
based on an intention to use the mark in commerce, the
evidentiary record includes excerpts from applicant’s
website that illustrate the utilitarian functionality of
the orange flavor of applicant’s medicine. See In re Promo
Ink, 78 USPQ2d 1301 (TTAB 2006) [examining attorney’s
introduction of portions of applicant’s website is
permissible in connection with examination of applicant’s
intent-to-use application]. As applicant’s website
indicates, poor patient compliance in taking prescribed
medicine is a major obstacle to the successful treatment of
depression; relative to applicant’s product, “more than
half [of the medical professionals surveyed] said that
greater discretion of administration and pleasant taste
were important advantages over conventional antidepressant
tablets.” 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.
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Ser No. 76467774
The impression conveyed by applicant’s website is that
applicant’s orange flavor renders its pharmaceutical
superior, not in effectiveness, but in getting patients to
take the pill so that the pharmaceutical can be effective.
It is obvious that a medication, no matter how potentially
effective, is useless unless the patient takes it. Indeed,
greater patient compliance may lead to quicker recovery.
Thus, 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, that is, the
existence of alternative designs (or, in this case,
flavors), the Federal Circuit has noted that the mere fact
that other designs are available does not necessarily mean
that applicant’s design is not functional. In re Bose, 227
USPQ at 5-6 [“That another type of [design] would work
equally as well does not negate that this [design] was
designed functionally to enhance or at least not detract
from the rest of the system...If the feature asserted to
give a product distinctiveness is the best, or at least
one, of a few superior designs for its de facto purpose, it
follows that competition is hindered. Morton-Norwich does
not rest on total elimination of competition in the goods.”
(emphasis in original)].
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Ser No. 76467774
The fact that there are alternative flavors is hardly
surprising, or in and of itself, legally sufficient to
establish that applicant’s orange flavor is not functional.
The question is not whether there are alternative flavors
that would perform the same basic function, but whether
these flavors work “equally well.” Id. at 1427, quoting 1
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, supra at §7:75.
The record does not indicate with any specificity the
number of flavors that might work effectively with
applicant’s antidepressants. Applicant mentions just two
alternatives in its arguments, namely cherry and grape.
(Appeal Brief, p. 4). Indeed, it would appear from the
record that certain flavors are more effective than others
in masking the particular tastes of certain medicinal
agents. Although the evidence shows a variety of flavors
may be used for different medications, 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.
Applicant itself touts its “pleasant orange taste” as
“an important advantage over conventional antidepressant
20
Ser No. 76467774
tablets.” While there may be other flavors that can be
used for antidepressants, applicant essentially promotes
its orange flavor as being better than others. In re Bose
Corp., 227 USPQ at 6 [“In concluding that the Bose
enclosure design is one of the best from the standpoint of
performance of the speaker system, we need only believe
Bose’s own statements.”]. Further, the record shows that
orange is consistently used as a flavor in the
pharmaceutical trade. Although we cannot definitively say
that orange is the most popular flavor, it certainly would
appear on the short list of most popular flavors. Thus, on
this record, we cannot say that there are true
alternatives, or at least a significant number of
acceptable alternatives, to an orange flavor for
antidepressants.
As to the first Morton-Norwich factor, applicant
indicated, in response to the examining attorney’s inquiry,
that “[a]pplicant’s mark is not the subject of an issued or
pending or abandoned patent application.” (Response, Oct.
14, 2003, p. 3). The fact that the proposed mark is not
the subject of a utility patent does not establish that
applicant’s orange flavor is nonfunctional. TrafFix
Devices, Inc. v. Marketing Displays, Inc., 58 USPQ2d at
1006. This factor may only be considered as neutral.
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Ser No. 76467774
Regarding the fourth Morton-Norwich factor, there is
nothing in the record to indicate that the addition of
applicant’s orange flavor to its pharmaceuticals results in
a comparatively simple or cheap method of manufacturing the
antidepressant tablet or pill. Applicant has stated that
its orange flavor “does not make the pharmaceutical work
better or affect its cost or quality. Rather the orange
flavor is fanciful in that with or without the orange
flavor, the pharmaceutical would be prescribed the same,
work the same, and cost the same.” (Appeal Brief, p. 4).
While evidence that a product feature makes the
product cheaper to manufacture may be probative in showing
functionality, evidence that it does not affect its cost is
not necessarily proof of non-functionality. As clearly
shown by applicant’s website and the standard use of flavor
in the trade, any money that a pharmaceutical company saves
by not flavoring bitter or otherwise unpalatable medicine
may not be a wise decision in a competitive environment.
Thus, even assuming that the addition of orange flavor to
applicant’s pharmaceuticals does not render the manufacture
thereof cheaper or simpler, this does not mean that
22
Ser No. 76467774
applicant’s orange flavor is not functional. We therefore
treat this factor as neutral.7
Analysis of the Morton-Norwich factors, and in
particular, applicant’s touting of the functional nature of
its orange flavor, and the lack of evidence of acceptable
alternatives, supports a finding of utilitarian
functionality in this case. The fact that two of the
factors are neutral does not affect this conclusion. There
is no requirement that all four factors must be found to
favor functionality before such a finding can be reached.
See TrafFix Devices Inc. v. Marketing Displays Inc., 58
USPQ2d at 1006 [functionality of design means that
competitors need not explore whether other designs might be
used].
In connection with the functionality issue in this
case, it is also helpful to consider competitive need.
Analysis of both competitive need and the Morton-Norwich
factors is relevant and useful in determining the issue of
functionality presented herein. See 1 J.T. McCarthy,
7
Even if the addition of an orange flavor to applicant’s
pharmaceuticals adds to the cost of manufacture, such additional
cost does not prove that orange flavoring is a non-functional
feature of the goods. Indeed, improving the utilitarian features
of a product may dictate that the manufacturing process be more
expensive or complicated. See In re Pingel Enterprise Inc., 46
USPQ2d 1811, 1821 (TTAB 1998) [applicant’s choice of a more
complex and expensive manufacturing process does not mean that
the configuration of the product is not functional].
23
Ser No. 76467774
McCarthy on Trademarks and Unfair Competition, supra at §
7:68.
In the past, competitive need has been a foundation of
the analysis of the functionality of certain marks. The
Federal Circuit has stated the following:
An important policy underlying the
functionality doctrine is the
preservation of competition. As this
court’s predecessor noted in Morton-
Norwich, the “effect upon competition
‘is really the crux’” of the
functionality inquiry, and,
accordingly, the functionality doctrine
preserves competition by ensuring
competitors “the right to compete
effectively.” As we stated in
Brunswick Corp. v. British Seagull
Ltd., “functionality rests on
‘utility,’ which is determined in light
of ‘superiority of design,’ and rests
upon the foundation of ‘effective
competition.’” The importance of
competition was reaffirmed in Qualitex,
in which the Supreme Court focused on
whether a feature “would put
competitors at a significant non-
reputation-related disadvantage.” And
when discussing the policy behind
limiting trade dress protection, the
Supreme Court in TrafFix noted that
“[a]llowing competitors to copy will
have salutary effects in many
instances.” (citations omitted).
Thus, in determining “functionality,”
the Board must assess the effect
registration of a mark would have on
competition.
Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d at 1428.
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Ser No. 76467774
As shown by the evidence, flavors are added to
pharmaceutical preparations to function as masks for the
unpleasant taste of the medications. Although one might
view this improved palatability as aesthetic appeal,
pharmaceutical producers tout, as fact, that flavoring is
effective in achieving increased patient compliance, which,
in turn, is a utilitarian feature that provides a
competitive advantage. Thus, we view the issue here, as do
both applicant and the examining attorney, as utilitarian
functionality. See Brunswick Corp. v. British Seagull
Ltd., 35 F.2d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert.
denied, 514 U.S. 1050 (1995) [color black for outboard
motors functional, even though it had no utilitarian effect
on the mechanical operation of the engines, because it
provided competitive advantages in the ease of coordination
with a variety of boat colors and reduction of the apparent
size of the engine]. The Supreme Court, in its Qualitex
decision, cited, with apparent approval, the Federal
Circuit’s decision in Brunswick as an example of a
situation where color has a utilitarian function.
We view the Federal Circuit’s language in Brunswick
regarding competitive need to be applicable to applicant’s
attempt to register its orange flavor:
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Ser No. 76467774
The Board considered the proposed
mark’s functionality: “Although the
color black is not functional in the
sense that it makes these engines work
better, or that it makes them easier or
less expensive to manufacture, black is
more desirable from the perspective of
prospective purchasers because it is
color compatible with a wider variety
of boat colors and because objects
colored black appear smaller than they
do when they are painted other lighter
or brighter colors. The evidence shows
that people who buy outboard motors for
boats like the colors of the motors to
be harmonious with the colors of their
vessels, and that they also find it
desirable under some circumstances to
reduce the perception of the size of
the motors in proportion to the boats.”
(citation omitted) The Board concluded
that the color black, applied to the
engines, is de jure functional because
of competitive need.
*****
The color black, as the Board noted,
does not make the engines function
better as engines. The paint on the
external surface of an engine does not
affect its mechanical purpose. Rather,
the color black exhibits both color
compatibility with a wide variety of
boat colors and ability to make objects
appear smaller. With these advantages
for potential customers, the Board
found a competitive need for engine
manufacturers to use black on outboard
engines. Based on this competitive
need, the Board determined that the
color was de jure functional. This
court discerns no error in the Board’s
legal reasoning and no clear error in
its factual findings...All outboard
engine manufacturers color their
products. These manufacturers seek
26
Ser No. 76467774
colors that easily coordinate with the
wide variety of boat colors. The Board
found that the color black served this
non-trademark purpose. In addition,
the Board found that the color black
serves the non-trademark purpose of
decreasing apparent object size. The
record showed that these features were
important to consumers. Unlike the
color pink in Owens-Corning, the Board
found a competitive need for the color
black. Thus, the Board concluded that
registration of Mercury’s proposed mark
would hinder competition. The court
discerns no clear error in the Board’s
findings.
Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d at 1121;
1122-23.
As stated by the Federal Circuit in Brunswick, “[a]s
with any mark, the test for de jure functionality hinges on
whether registration of a feature hinders competition, and
not whether the feature contributes to the product’s
commercial success.” 32 USPQ2d at 1124. In the Brunswick
case, color compatibility and the ability to decrease
apparent engine size supplied a competitive advantage. See
also In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) [pink
skin color held functional for wound dressings].
In the same way, applicant’s applied-for orange flavor
is functional. 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
27
Ser No. 76467774
medicine intrinsically any more effective in treating
depression. Rather, like the advantages of color
compatibility and reduction in apparent engine size
afforded by the color black, applicant’s 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. Registration by applicant would hinder
competition by placing competitors at a substantial
competitive disadvantage.
As indicated above, the Board has not had an
opportunity to rule on the registrability of flavor as a
trademark until this case. Moreover, there is a dearth of
case law from other tribunals squarely addressing this
issue. One case that dealt with the functionality of
flavor, and that has applicability to our decision herein,
is William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526
(1924).8 This litigation involved two competing
pharmaceutical manufacturers that were using chocolate to
give their liquid quinine preparations color and flavor,
and to aid in suspending the other ingredients. Lilly sued
Warner and sought, in pertinent part, to enjoin Warner’s
8
Neither applicant nor the examining attorney cited this case.
28
Ser No. 76467774
continued manufacture and sale of the preparation if
flavored with chocolate. The Supreme Court refused to find
that Lilly had exclusive rights in the brown color of the
quinine preparation, which was due to the presence of
chocolate as a masking agent and suspension medium. The
Court stated:
Chocolate is used as an ingredient, not
alone for the purpose of imparting a
distinctive color, but for the purpose
of also making the preparation
peculiarly agreeable to the palate, to
say nothing of its effect as a
suspending medium. While it is not a
medicinal element in the preparation,
it serves a substantial and desirable
use, which prevents it from being a
mere matter of dress. It does not
merely serve the incidental use of
identifying the respondent’s
preparation and it is doubtful whether
it should be called a nonessential.
(emphasis added)(citation omitted).
Although the Court did not use the term “functional,” the
Court, in suggesting that the chocolate was not
“nonessential,” essentially concluded that chocolate was
functional. In so holding, the Court observed the
following:
The use of chocolate as an ingredient
has a three-fold effect: It imparts to
the preparation a distinctive color and
a distinctive flavor, and to some
extent, operates as a medium to suspend
the quinine and prevent its
precipitation. It has no therapeutic
value; but it supplies the mixture with
29
Ser No. 76467774
a quality of palatability for which
there is no equally satisfactory
substitute. (emphasis added)
Thus, the Court appears to be stating that the
chocolate was functional because, among other things, its
flavor made the medicine palatable; the flavor “serves a
substantial and desirable use, which prevents it from being
a mere matter of dress.” As the Court later articulated
the legal standard in subsequent cases, the chocolate,
including the chocolate flavor, was “essential to the use
or purpose of the product.” Qualitex Co. v. Jacobson
Products Co., 34 USPQ2d at 1163-64. The same can be said
concerning applicant’s orange flavor.
In sum, the evidence clearly shows that the medicinal
ingredients in pharmaceuticals generally have a
disagreeable taste that may be masked so that patients will
be more likely to take the medicine. Therefore, flavor
performs a utilitarian function that cannot be monopolized
without hindering competition in the pharmaceutical trade.
To allow registration of “an orange flavor” as a trademark
would give applicant potentially perpetual protection for
this flavor, resulting in hindrance of competition. See
Jerome Gilson and Anne Gilson LaLonde, Cinnamon Buns,
Marching Ducks and Cherry-Scented Racecar Exhaust:
Protecting Nontraditional Trademarks, 95 Trademark Rep.
30
Ser No. 76467774
773, 800-01 (July-August, 2005) [“One substantial
impediment to enforcement of flavor marks is functionality.
Certain flavors may be found to be functional because they
need to be available to the competition.”]; and Nancy L.
Clarke, Issues in the Federal Registration of Flavors as
Trademarks for Pharmaceutical Products, 1993 U. Ill. L.
Rev. 105, 132 [“[I]f the Patent and Trademark Office or the
courts are asked to grant trademark status to the flavor of
a prescription pharmaceutical product, they should refuse
to do so. The Patent and Trademark Office and the courts
may rely on the utilitarian functionality doctrine and on
practical considerations to deny legal protection to
flavors on this type of product.”].
Failure to Function as a Mark
We now address the question of whether applicant’s
proposed mark functions as a trademark. Implicit in the
statutory definition of a “trademark” set forth above is a
requirement that there be a direct association between the
matter sought to be registered and the goods identified in
the application, that is, that the matter is used in such a
manner that it would be readily perceived as identifying
such goods. The present case is based on an intention to
use the mark in commerce; applicant has not filed an
amendment to allege use and, thus, there is no specimen of
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Ser No. 76467774
record. Accordingly, we must make our determination based
on the description provided in the application, namely, “an
orange flavor,” rather than on any evidence of how the
proposed mark would be or is actually used.
As is the case with any trademark, mere intent that a
word, name, symbol or device function as a trademark or
service mark is not enough in and of itself. In re
Morganroth, 208 USPQ 284 (TTAB 1980). In the present case,
the critical inquiry becomes: Would the “orange flavor”
sought to be registered be perceived as a source indicator
or merely as a flavor of the pharmaceutical?
To state the obvious, virtually everything that humans
put in their mouths has some sort of flavor: from food to
wine to toothpaste to pharmaceuticals.9 As shown by the
evidence of record, it is standard practice within the
pharmaceutical industry to flavor medicines to make them
more palatable. This was true long before the application
in this case was filed. Indeed, the evidence shows that
there are at least two entities whose businesses are
devoted solely to manufacturing flavorings to add to
medicines to make them more palatable. Because of this
9
Indeed, even a tablet or pill designed for medicine that is
swallowed quickly with water would normally have some taste or
flavor.
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Ser No. 76467774
common practice, consumers would not view the flavor of a
pharmaceutical as a trademark; rather, they would consider
it to be an inherent feature of the product that renders it
more appealing. In this respect, flavor is analogous to
product design and color. As stated by the Supreme Court:
In the case of product design, as in
the case of color, we think consumer
predisposition to equate the feature
with the source does not exist.
Consumers are aware of the reality
that, almost invariably, even the most
unusual of product designs--such as a
cocktail shaker shaped like a penguin--
is intended not to identify source, but
to render the product itself more
useful or more appealing.
Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 54
USPQ2d 1065, 1069 (2000).
There is nothing in the record to indicate that “an
orange flavor” for applicant’s antidepressants would be
perceived as a trademark for them. On the contrary, the
record shows that an orange flavor is used in numerous
medicines. As a result, 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. To
be sure, the record is completely devoid of any evidence of
consumer recognition of applicant’s “orange flavor” as a
trademark.
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Ser No. 76467774
Inasmuch as flavors, including orange, are a common
feature of pharmaceuticals, we find that consumers would
not view applicant’s orange flavor as a trademark. See
Jerome Gilson and Anne Gilson LaLonde, Cinnamon Buns,
Marching Ducks and Cherry-Scented Racecar Exhaust:
Protecting Nontraditional Trademarks, supra at 801
[“Consumers may not see flavor in a product as a trademark.
To them, it may be just another feature of the goods.”].
Applicant’s contention that its orange flavor is so
unique and distinctive that it deserves trademark
protection is not persuasive. In this connection, we note
that applicant has applied to register merely “an orange
flavor,” without limiting its application to a particular
type of orange flavor. Although the examining attorney
accepted the description “an orange flavor” as adequate,
this description hardly describes any particular orange
flavor, let alone applicant’s purportedly distinctive
orange flavor. If a registration were to issue for the
mark with this description, applicant would gain exclusive
rights to all flavors of orange, not just the “unique”
orange flavor that applicant claims it has.
Even if we were to treat applicant’s application as
being for its “unique” orange flavor, we would find that
applicant’s flavor fails to function as a mark. Because
34
Ser No. 76467774
flavor is generally seen as a characteristic of the goods,
rather than as a trademark, a flavor, just as in the cases
of color and scent, can never be inherently distinctive.
As previously discussed, flavor, including an orange
flavor, is so intrinsic a feature of pharmaceuticals, that
consumers will not perceive a flavor, even a “unique”
orange flavor, as a trademark unless they have been
educated to perceive it as such. Thus, any registration of
a flavor requires a substantial showing of acquired
distinctiveness. Evidence of acquired distinctiveness was
not introduced in this application. See, e.g., Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 54 USPQ2d at 1068,
citing Qualitex Co. v. Jacobson Products Co., Inc., 34
USPQ2d 1162-1163. See also TMEP §1202.05(a) (4th ed. 2005)
[“The burden of proving that a color mark has acquired
distinctiveness is substantial.”]; and TMEP §1202.13 (4th
ed. 2005) [“The amount of evidence required to establish
that a scent or fragrance functions as a mark is
substantial.”].
Although our decision is based on the analysis set
forth above, we are not blind to the practical
considerations involved in the registration of flavor
marks. Flavor perception is very subjective; what
applicant considers to be a unique and distinctive orange
35
Ser No. 76467774
flavor may be considered by patients as simply an orange
flavor. Moreover, the Office’s examination of flavor
marks, not to mention litigation at the Board, would be
very problematic.10
Further, it is not clear how taste would as a
practical matter function as a trademark. A consumer
generally has no access to the product’s flavor prior to
purchase. A trademark is defined as a word, name, symbol,
or device that is used by a person “to identify and
distinguish his or her goods, including a unique product,
from those manufactured or sold by others and to indicate
the source of the goods.” Section 45 of the Trademark Act,
15 U.S.C. §1127. Unlike color, sound and smell, there
10
In the abstract, we see some difficulty in how a taste could
function as a trademark. As stated by Ms. Clarke in her law
review article:
A flavor’s subjectivity derives principally
from its complexity. Flavors consist of
three elements: aroma, taste (sweet, acid,
bitter, or saline), and feeling. Numerous
factors influence taste acuity, among them
age, disease, and, for certain tastes,
temperature. In addition, one’s taste
perception varies with practice, increasing
the subjectivity of this sense. Thus,
because of the subjectivity of flavor
perception, the risk of inconsistent
results would be substantial if the PTO
examined flavors for trademark protection,
or if a flavor trademark owner sought to
enforce his rights in court. (footnotes
omitted).
Nancy L. Clarke, Issues in the Federal Registration of Flavors as
Trademarks for Pharmaceutical Products, supra at 131.
36
Ser No. 76467774
generally is no way for consumers routinely to distinguish
products by sampling them before they decide which one to
purchase.11 Generally, it would not be expected that
prescribed antidepressants would be tasted prior to
purchase so that a consumer, in conjunction with a
physician, could distinguish one antidepressant from
another on the basis of taste. Thus, the consumer, in
making a purchasing decision involving either a prescribed
medication or an over-the-counter medication, is unable to
distinguish one pharmaceutical from another based on
flavor. Consequently, it is difficult to fathom exactly
how a flavor could function as a source indicator in the
classic sense, unlike the situation with other
nontraditional trademarks such as color, sound and smell,
to which consumers may be exposed prior to purchase.
Decision: The refusals to register are affirmed.
11
Further, what would be an acceptable specimen of use in this
case? Without ingesting applicant’s antidepressant tablet or
pill, there is no way to taste the purportedly “distinctive”
orange flavor that applicant claims as its trademark. Would the
orange flavor used in a placebo tablet or pill (submitted as a
specimen) taste the same as the “distinctive” orange flavor
masking the bitterness of applicant’s antidepressant? And, the
same flavor may taste different to different consumers. See n.
10, supra. Given that the same flavor may be described in a
variety of different ways, a detailed description of the flavor
on labels, packaging, etc. would not be sufficient.
37