Let restaurant proprietors take note: In New York Pizzeria, Inc. v. Syal,[1] the U.S. District Court for the Southern District of Texas was asked to rule on a motion to dismiss a number of claims, including, among other things, whether a restaurant had violated the Lanham Act[2] and other trademark and “trade dress” laws by copying the plating methods and distinctive flavors of a rival chain. While the Court allowed claims relating to improper access to computers containing proprietary information to go forward, the trademark and trade dress claims were dismissed.

The Court rather whimsically described the theories regarding the trademark status of flavors as “half-baked”:

The Court does not doubt that flavor can “carry meaning,” but that meaning entitles a mark to trademark protection only if it distinguishes the source of a product. See Sunbeam Prods., Inc. v. W. Bend Co., 123 F.3d 246, 252 (5th Cir. 1997) (“[T]he essence of a protected mark is its capacity to distinguish a product and identify its source.”). Some marks, typically words or designs created out of whole cloth that are considered “arbitrary” or “fanciful,” are inherently distinctive. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000); Qualitex, 514 U.S. at 162–63 (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9–10 (2d Cir. 1976)). Rather than describing the product to which they are attached, inherently distinctive marks identify the source of that product. Colors, on the other hand, cannot be inherently distinctive, because consumers are not predisposed to assume they are indicators of a product’s source. See Wal-Mart Stores, 529 U.S. at 211–13.

As with colors, it is unlikely that flavors can ever be inherently distinctive, because they do not “automatically” suggest a product’s source. See In re N.V. Organon, 79 U.S.P.Q.2d 1639, at *15 (T.T.A.B. June 14, 2006) (“Because 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.”). It is therefore only when a flavor has acquired distinctiveness, or “secondary meaning”—that is, when customers have learned to associate the flavor with its source—that it has any chance of serving as a valid trademark. See Wal-Mart Stores, 529 U.S. at 211 (“[A] mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, ‘in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.’”).

But even then, there is another hurdle to achieving trade dress status: functional product features are not protectable. Qualitex, 514 U.S. at 165. A product feature is functional “‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” Id. (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)). To afford functional features protection under trademark law, which is focused on “promot[ing] competition by protecting a firm’s reputation,” would intrude on other areas of intellectual property law that allow producers to prevent competitors from incorporating a “useful product feature.” Id. at 164–65.

…

If the hurdle is high for trademarks when it comes to the flavor of medicine, 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. See Qualitex, 514 U.S. at 165.[3]

Similarly, the Court held that the method of plating baked ziti and other foods could not be entitled to protected trademark status:

Although NYPI cites ample authority demonstrating that “non-traditional” marks are entitled to protection, it cites no authority specifically addressing plating. See Docket Entry No. ¶ 35 22–24. This Court recognizes, however, that there may be some rare circumstances in which the plating of food can be given 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. It is conceivable that certain well known “signature dishes” could meet this very high standard. See Naomi Straus, Comment, Trade Dress Protection for Cuisine: Monetizing Creativity in a Low-IP Industry, 60 UCLA L. REV. 182, 218–47 (2012).
 
NYPI, however, cannot show any of this because it has not alleged which plating methods it has a protected trade dress interest in (it only states that its claim “includes, but is not limited to” its baked ziti, eggplant parmesan, and chicken parmesan dishes), what makes them distinctive and nonfunctional, and what infringes them.[4]

Hat tip: Michael Lovitz.

[1] C.A. No. 3:13-CV-335 (S.D. Tex. Oct. 20, 2014).

[2] 15 U.S.C. § 1051 et seq.

[3] New York Pizzeria, Mem. Op. at 11-13 (citations as in original, emphasis added).

[4] Id. At 14-15 (citations as in original, emphasis added).