When a pharmaceutical company filed an application with the U.S. Patent and Trademark Office (PTO) for a trademark for the orange flavor used in its antidepressant tablets, it was trying to break new ground. Certainly, there are precedents for trademarks apart from the traditional forms consisting of words and logos. There are trademarks derived from the use of certain colors–think of the familiar pink fiberglass insulation or an orange home improvement store. There are even some trademarks associated with certain smells and sounds, such as sewing thread with a floral fragrance, strawberry-scented lubricants, and the familiar chimes used by one of the major television networks. But the attempt to trademark a flavor ran into obstacles that the company was unable to surmount.
Federal trademark law 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. Still, according to the PTO, there were two basic problems with attempting to trademark an orange-flavored medicine. First, the orange flavor did not serve as a source identifier, as it did not identify or distinguish the goods of the applicant from the products of others.
Orange flavoring is a common additive in orally administered medicines. The idea, which is not new, is to make the drug more palatable, thereby increasing patient compliance. In the language of trademark law, the applicant could not show that the public associated the orange flavor with the applicant’s product to such an extent as to show distinctiveness or “secondary meaning.”
Second, it is basic trademark law that a characteristic of a product cannot result in a trademark when it serves an essential functional purpose for the product. An example is the use of a color to make a product more visible. The rationale for this “functionality” doctrine is the goal of maintaining a balance between trademark law and patent law. Trademark law is intended to promote competition by protecting a company’s reputation, but it is not the purpose of trademark law to diminish competition by allowing a producer of a product to seize control of a particularly functional product feature. A business should apply for a patent, not a trademark, if its goal is to monopolize a new product design or function for a limited time.
In the case of the orange-flavored pill, the flavor was all about function. At least indirectly, the flavor made the drug work better, because it increased patients’ willingness and ability to take it as prescribed. The company’s own website was part of the evidence weighing against the application. It touted the fact that the “pleasant orange taste” improved the efficacy of the medication by masking the inherent bitterness found in many therapeutic agents.
Apart from the particular application before it, the PTO expressed doubts as to how any particular taste or flavor could acquire the status of a trademark. Unlike color, smell, and sound, a consumer generally has no access to a product’s flavor prior to purchasing the product. As a result, it is difficult to fathom how a flavor can serve as a source identifier, at least in the classic sense, given the definition of a trademark as something that identifies and distinguishes goods and that lets the consumer know their source.