Judge Rules That Flavor of Pizza Isn't Entitled to Trademark Protection

Patrick Stewart Eating Pizza - P 2013

Patrick Stewart Eating Pizza - P 2013

This story is about a judge denying trademark protection on a flavor of pizza, and we'll be up-front in saying that it doesn't directly relate to the entertainment industry though we could point out that the boom in food shows on television could theoretically prompt celebrity chefs to take their culinary bona fides to court. Ain't necessary, though, because we're talking about trademark protection on a flavor of pizza.

"Intellectual property plays a prominent and growing role in our Information Age economy," opens Texas judge Gregg Costa's opinion this week. "In this case, though, the plaintiff seeks intellectual property protection for something quite traditional: the meal one might order at a neighborhood pizzeria."

New York Pizzeria, Inc. is the plaintiff in this case that was brought after its former president allegedly conspired to create a knockoff restaurant chain called Gina's Italian Kitchen using NYPI's recipes, suppliers and internal documents. The lawsuit includes an allegation of a computer hack, but we'll focus on the judge's analysis of the trademark claims.

According to NYPI, its "specially sourced branded ingredients and innovative preparation and preservation techniques contribute to the distinctive flavor" of its products.

Trademarks are meant to distinguish goods, and as Judge Costa recognizes, the source-distinguishing ability of a mark is what counts. The judge says that in principle, almost anything that is capable of carrying meaning can gain protection via the Lanham Act, but at minimum, that anything has to be distinctive. Fanciful words? Yes. Colors? No, because as the judge writes, "consumers are not predisposed to assume they are indicators of a product's source."

How about pizza?

"As with colors, it is unlikely that flavors can ever be inherently distinctive, because they do not 'automatically' suggest a product's source," he writes.

But even if pizza fans can close their eyes, bite into one, and recognize a slice of New York Pizzeria when they taste it, Judge Costa gives a second reason why trademark protection can't extend to taste: "Functional product features are not protectable," he writes.

The judge points to a prior decision at the Trademark Trial and Appeal Board as precedent. a pharmaceutical company attempted to gain a trademark on the orange flavor of its medicine, but that was ruled out-of-bounds when the TTAB decided that by flavoring a disagreeable taste, the company merely "performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade."

"If the hurdle is high for trademarks when it comes to the flavor of medicine," Judge Costa reasons, "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."

Fear not, celebrity chefs. The judge goes onto suggest that the plating of food could in fact rise to having trade dress protection.

"When plating is either inherently distinctive or has acquired a secondary 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," writes the judge. "It is conceivable that certain well-known 'signature dishes' could meet this very high standard."

Unfortunately for NYPI, it hasn't made the necessary showing on how it plates baked ziti and eggplant or chicken parmesan at its stores. With a sour taste in his mouth at having been served the plaintiff's "half-baked" claim, the judge dismisses the allegation of trade dress infringement too.

One can only hope that this lawsuit gets a-pealed, because as we've seen by fights over things like 3D dental braces, these oddest of cases invite the bestest of amicus briefs. The entertainment industry might weigh in just yet.

Email: Eriq.Gardner@THR.com
Twitter: @eriqgardner