The Color Purple But Not the Flavor Orange:

Can Flavor Function as a Trademark for a Pharmaceutical?

Life Sciences Vector
May 20, 2008

Sensory experiences are changing the face of the pharmaceutical trademark landscape. Examples of sensory experiences that may function as marks include visual experiences (“the colors purple and gold as applied to the surface of a pharmaceutical capsule” containing Astrazeneca’s anti-depressant product, popularly known as the “purple pill”), olfactory experiences (“a minty scent by mixture of highly concentrated methyl salicylate (10wt%) and menthol (3wt%)” for “medicated transdermal patches” from Hisamitsu Pharmaceutical), and aural experiences (“the sound of a childlike human giggle” allowed for “pharmaceutical preparations for use in the treatment of infertility” from N.V. Organon). As Organon discovered, however, taste experiences may not function as marks for pharmaceutical products.

In In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) [precedential], the Trademark Trial and Appeal Board (the “Board”) affirmed a refusal to register “an orange flavor” for use with “antidepressants in quick-dissolving tablets and pills,” finding orange flavor for applicant’s product de jure functional and incapable of functioning as a trademark.

On appeal, the Examining Attorney argued that orange flavor “is a standard feature of orally administered pharmaceutical products and simply would not be perceived as an indicator of source” because it is “commonly added to orally-administered pharmaceutical products to render the products more palatable, thereby increasing patient compliance ….” Id. at p. 3. With respect to functionality, she cited statements on Organon’s web site touting advantages of the orange flavor. Granting Organon exclusive rights to orange flavor, she concluded, would place competitors at a substantial competitive disadvantage.

Organon argued that, “just as color and scent are entitled to trademark protection” id. at p. 5, orange flavor is likewise capable of functioning as a mark. Organon presented a number of arguments supporting registrability: its product was successful prior to adopting the orange flavor; doctors do not prescribe product based on flavor; it chose and is using a distinctive orange flavor; it could have selected alternative flavors such as cherry or grape; and the product’s function is solely to work as an antidepressant and is unaffected by the orange flavor.

The appeal presented a case of first impression at the Board. The Board began by acknowledging both that non-traditional marks such as color and scent may be registrable and that the definition of a trademark under the Trademark Act is quite broad, noting the Senate Report on the Trademark Law Revision Act of 1988 indicates the words “symbol or device” were retained as part of the definition “so as not to preclude the registration of colors, shapes, smells, sounds or configurations where they function as trademarks.” Id. at p. 14, fn. 6, citing S. Rep. No. 100-515, at 44, 100th Cong., 2d Sess. (1998).

Turning to the question of functionality, the Board noted the Trademark Act was amended to provide expressly that a trademark application may be refused if the applied-for mark “comprises any matter that, as a whole, is functional.” 15 U.S.C. §1052(e)(5). Applying the four factor test in In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1992), the Board found the second factor, advertising materials in which the utilitarian advantages of the mark are touted, particularly relevant in light of Organon’s promotional materials touting the utilitarian advantages of its orange flavor, and held Organon’s orange flavor functional not because it made the product work better but because it made the product more desirable.

Turning finally to the question of whether Organon’s orange flavor functions as a mark, the Board held consumers would view the orange flavor not as a trademark but rather as “just another feature of the medication, making it palatable.” In re N.V. Organon at p. 33. The Board further opined that “a flavor, just as in the case of color and scent, can never be inherently distinctive” and any attempt by future applicants to register flavor as a mark will require “a substantial showing of acquired distinctiveness.” Id. at p. 35. Moreover, the Board cautioned, there are “many practical considerations involved in the registration of flavor marks,” id, including subjectivity as to whether a flavor is distinctive and - unlike as with color, sound and smell - consumers generally have no access to flavor prior to purchasing a product, all of which make it “difficult to fathom exactly how a flavor could function as a source indicator in the classic sense.” Id. at p. 37.

Pharmaceutical companies developing a unique palatable flavor for their products hoping to protect that flavor by means of a federal trademark registration may find Organon a tough pill to swallow.

For more information, contact Sean D. Detweiler.