Food Flavor Can’t Be Trademarked (Even If The Baked Ziti Is Delicious)–NY Pizzeria v. Syal (Forbes Cross-Post)

You may remember the advertising campaign for Coke Zero from almost a decade ago. The gag is that Coke Zero allegedly tasted so much like “real” Coke that one division of Coca-Cola threatened to sue another division for “taste infringement.” If you don’t recall the Coke Zero commercials, watch an example (embedded below) and a 2007 New York Times article recapping the ad campaign.

In my world, ridiculous intellectual property overclaims aren’t very funny, even in fictional commercials. Yet, apparently Russo’s New York Pizzeria restaurant chain–which is from Texas, not New York, despite its name–found Coke’s ads more inspiring than humorous. In a life-imitating-art moment, it sued a rival chain, Gina’s Italian Kitchen, for taste infringement. Russo’s claimed trademark rights in how its food tasted, and it said the rival chain copied that taste. Fortunately for the rival chain (and the Coke Zero division), a federal court found Russo’s claim “half-baked” (the judge’s words, not mine).

Typically, trademarks are words or logos associated with a marketplace offering, such as the Coca-Cola name or its swoosh logo. However, in limited circumstances, a product’s features (in addition to the product’s “brand”) also may be protected as trademarks when consumers view those features as signals of the product’s source. Given the expansive view of what’s potentially trademarkable, it’s not ridiculous to think that a food’s flavor could qualify for trademark protection.

However, no matter how consumers view a product feature, the feature isn’t trademarkable when it is “functional,” i.e., “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” In the case of food, flavor will almost always be functional. As this court explains, the:

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….NYPI does not allege that its supposedly unique flavoring is merely an identifier, and any such allegation would be implausible given that the flavor of pasta and pizza has a functional purpose.

Though this may seem like a harsh ruling for the purveyors of innovative food flavors, it’s a logical outcome for at least two reasons. First, imagine the competitive implications if we allowed trademark protection for flavors. The first food vendor to popularize a flavor would get the perpetual rights to prevent all others from replicating the flavor. In other words, the first baked ziti vendor could potentially prevent all others from offering baked ziti that tasted anything like the original. This would quickly retard innovation in our food supply, especially because there are a limited number of flavor profiles that humans find delicious.

Second, food vendors can still rely on trade secret law to protect their recipes. Indeed, Coca-Cola has one of the most paradigmatic trade secrets of all time, its Coca-Cola formula. The problem with trade secrets is that they don’t prevent reverse engineering. As a result, if rival food vendors can independently figure out how to make an identical flavor, trade secret law won’t stop them. Interestingly, the basic recipe for Coca-Cola has been well-known for decades, but still no one has been able to figure out precisely how to replicate its taste.

Case citation: New York Pizzeria, Inc. v. Syal, 3:13-CV-335 (S.D. Tex. Oct. 20, 2014). I tested on taste infringement in my 2010 Intellectual Property Law exam. See my sample answer.