As stated in section 1202.13 Scent, Fragrance, or Flavor of the Trademark Manual of Examination Procedure:

Scent. The scent of a product may be registrable if it is used in a nonfunctional manner. See In re Clarke, 17 USPQ2d 1238 (TTAB 1990) (Trademark Trial and Appeal Board held that a scent functioned as a mark for "sewing thread and embroidery yarn)." Scents that serve a utilitarian purpose, such as the scent of perfume or an air freshener, would be functional and not registrable. See TMEP §§1202.02(a) et seq. regarding functionality. When a scent is not functional, it may be registered on the Principal Register under §2(f), or on the Supplemental Register if appropriate. The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial. Cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

Flavor. Just as with a scent or fragrance, a flavor can never be inherently distinctive. In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (affirming refusal to register "an orange flavor" for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills," on the grounds that the proposed mark was functional under §2(e)(5) and failed to function as a mark within the meaning of §§1, 2, and 45 of the Trademark Act.). The Board has observed that it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function and consumers generally have no access to a product's flavor or taste prior to purchase. Id. Thus, an application to register a flavor "requires a substantial showing of acquired distinctiveness." Id.

Detailed Description of the Mark Required. The requirement for a drawing does not apply to non-visual marks. For these types of marks, the applicant must submit a detailed written description of the mark that clearly explains the sound, scent, or other non-visual matter. 37 C.F.R. §2.52(e). In a TEAS application, the required description of the mark should be set forth in the "Description of the Mark" field. See TMEP §807.09 regarding validating and submitting electronic applications for non-visual marks.

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  • In re N.V. Organon is the Board's case of first impression regarding the registerability of flavor or taste as a trademark.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • This appeal presents a case of first impression...This is, however, the Board's first opportunity to consider the registrability of flavor or taste as a trademark.
  • Case Finding: Sound is not inherently distinctive, but registerable upon a showing of acquired distinctiveness. Fragrance is registerable as a mark.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • In the past, the Board has considered the registrability of "nontraditional" trademarks such as sound3 and scent.4 FOOTNOTE 3 "In re General Electric Broadcasting Co., Inc., 199 USPQ 560 (TTAB 1978) [sound of a "Ship's Bell Clock" found not inherently distinctive, but would be registrable upon a showing of acquired distinctiveness as a service mark for radio broadcasting services]." FOOTNOTE 4 "In re Clarke, 17 USPQ2d 1238 (TTAB 1990) ["a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms" found registrable for "sewing thread and embroidery yarn"]."
  • Case Finding: Color is registerable as a trademark.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • And the Board, the Federal Circuit and the Supreme Court have had occasion to consider the registrability of color.5 FOOTNOTE 5 "See, e.g., Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) [green-gold color used on dry cleaning press pads found protectible as a trademark where the color had acquired distinctiveness]; In re Owens Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) [the color pink as applied to fibrous glass residential insulation registrable where the evidence showed the color had acquired distinctiveness]; and In re Deere & Co., 7 USPQ2d 1401 (TTAB 1988) [the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence held to establish that the colors had become distinctive of the goods]."
  • Statutory definition of trademark does not preclude registration of colors, shapes, smells, sounds or configurations where they function as trademarks.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • At the outset, we acknowledge that the Trademark Act sets forth a broad definition of "trademark," essentially encompassing nontraditional trademarks by not excluding them. Section 45 of the Trademark Act, 15 U.S.C. §1127, 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 their source.6 FOOTNOTE 6 "The Senate Report on the Trademark Law Revision Act of 1988 indicates that the amendments to this section kept the words "symbol, or device" with the intention "so as not to preclude the registration of colors, shapes, smells, sounds or configurations where they function as trademarks." S.Rep.No. 100-515, at 44, 100th Cong., 2d Sess. (1988). See also The United States Trademark Association Trademark Review Commission Report and Recommendations to USTA President and Board of Directors, 77 TMR 375, 421 (1987)[recommending that "the terms ‘symbol, or device'...not be deleted or narrowed to preclude registration of such things as a color, shape, smell, sound, or configuration which functions as a mark."]. We note in passing, however, that any reference to "taste" or "flavor" functioning as a trademark is absent from these reports."
  • The statutory language describes the universe of things that can qualify as a trademark in the broadest of terms.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The United States Supreme Court, in deciding the registrability of color as a trademark, noted that the statutory language describes the universe of things that can qualify as a trademark "in the broadest of terms." Qualitex Co. v. Jacobson Products Co., 34 USPQ2d at 1162.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The Court went on to state that "[s]ince human beings might use as a ‘symbol' or ‘device' almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive." Id. at 1162.
  • It is the source distinguishing ability of a mark – not its ontological status as color, shape, fragrance, word, or sign – that permits it to serve the basic purposes of a trademark.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The Court's view is that "[i]t is the source distinguishing ability of a mark – not its ontological status as color, shape, fragrance, word, or sign – that permits it to serve" the basic purposes of a trademark. Id. at 1163.
  • The Morton-Norwich case and its discussion of the evaluation of the evidence whether a mark for orange flavoring is functional (and not registerable) apply to marks concerning flavors.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The Morton-Norwich factors provide a framework with which to evaluate the evidence relating to functionality. Accordingly, we now turn to consider the facts in evidence that are relevant to the Morton-Norwich factors.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The second Morton-Norwich factor, namely applicant's promotional materials touting the utilitarian advantages of the orange flavor, is particularly significant in assessing functionality in this case. See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); and In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001). See also 1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 7:74 (4th ed. 2006) ["If a seller advertises the utilitarian advantages of a particular feature, this constitutes strong evidence of functionality."].
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Although the application is based on an intention to use the mark in commerce, the evidentiary record includes excerpts from applicant's website that illustrate the utilitarian functionality of the orange flavor of applicant's medicine. See In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006) [examining attorney's introduction of portions of applicant's website is permissible in connection with examination of applicant's intent-to-use application].
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • It is obvious that a medication, no matter how potentially effective, is useless unless the patient takes it. Indeed, greater patient compliance may lead to quicker recovery. Thus, because the orange flavor of applicant's medication leads to patient compliance, the orange flavor indirectly increases the efficacy of the medication.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • As to the third Morton-Norwich factor, that is, the existence of alternative designs (or, in this case, flavors), the Federal Circuit has noted that the mere fact that other designs are available does not necessarily mean that applicant's design is not functional. In re Bose, 227 USPQ at 5-6 ["That another type of [design] would work equally as well does not negate that this [design] was designed functionally to enhance or at least not detract from the rest of the system...If the feature asserted to give a product distinctiveness is the best, or at least one, of a few superior designs for its de facto purpose, it follows that competition is hindered. Morton-Norwich does not rest on total elimination of competition in the goods." (emphasis in original)].
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The fact that there are alternative flavors is hardly surprising, or in and of itself, legally sufficient to establish that applicant's orange flavor is not functional. The question is not whether there are alternative flavors that would perform the same basic function, but whether these flavors work "equally well." Id. at 1427, quoting 1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, supra at §7:75.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • While there may be other flavors that can be used for antidepressants, applicant essentially promotes its orange flavor as being better than others. In re Bose Corp., 227 USPQ at 6 ["In concluding that the Bose enclosure design is one of the best from the standpoint of performance of the speaker system, we need only believe Bose's own statements."]. Further, the record shows that orange is consistently used as a flavor in the pharmaceutical trade. Although we cannot definitively say that orange is the most popular flavor, it certainly would appear on the short list of most popular flavors. Thus, on this record, we cannot say that there are true alternatives, or at least a significant number of acceptable alternatives, to an orange flavor for antidepressants.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • As to the first Morton-Norwich factor, applicant indicated, in response to the examining attorney's inquiry, that "[a]pplicant's mark is not the subject of an issued or pending or abandoned patent application." (Response, Oct. 14, 2003, p. 3). The fact that the proposed mark is not the subject of a utility patent does not establish that applicant's orange flavor is nonfunctional. TrafFix Devices, Inc. v. Marketing Displays, Inc., 58 USPQ2d at 1006. This factor may only be considered as neutral.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Regarding the fourth Morton-Norwich factor, there is nothing in the record to indicate that the addition of applicant's orange flavor to its pharmaceuticals results in a comparatively simple or cheap method of manufacturing the antidepressant tablet or pill. Applicant has stated that its orange flavor "does not make the pharmaceutical work better or affect its cost or quality. Rather the orange flavor is fanciful in that with or without the orange flavor, the pharmaceutical would be prescribed the same, work the same, and cost the same." (Appeal Brief, p. 4).
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • FOOTNOTE 7 "Even if the addition of an orange flavor to applicant's pharmaceuticals adds to the cost of manufacture, such additional cost does not prove that orange flavoring is a non-functional feature of the goods. Indeed, improving the utilitarian features of a product may dictate that the manufacturing process be more expensive or complicated. See In re Pingel Enterprise Inc., 46 USPQ2d 1811, 1821 (TTAB 1998) [applicant's choice of a more complex and expensive manufacturing process does not mean that the configuration of the product is not functional]."
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • In connection with the functionality issue in this case, it is also helpful to consider competitive need. Analysis of both competitive need and the Morton-Norwich factors is relevant and useful in determining the issue of functionality presented herein. See 1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, supra at § 7:68.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • In the past, competitive need has been a foundation of the analysis of the functionality of certain marks. The Federal Circuit has stated the following: "An important policy underlying the functionality doctrine is the preservation of competition. As this court's predecessor noted in Morton- Norwich, the "effect upon competition ‘is really the crux'" of the functionality inquiry, and, accordingly, the functionality doctrine preserves competition by ensuring competitors "the right to compete effectively." As we stated in Brunswick Corp. v. British Seagull Ltd., "functionality rests on ‘utility,' which is determined in light of ‘superiority of design,' and rests upon the foundation of ‘effective competition.'" The importance of competition was reaffirmed in Qualitex, in which the Supreme Court focused on whether a feature "would put competitors at a significant nonreputation- related disadvantage." And when discussing the policy behind limiting trade dress protection, the Supreme Court in TrafFix noted that "[a]llowing competitors to copy will have salutary effects in many instances." (citations omitted). Thus, in determining "functionality," the Board must assess the effect registration of a mark would have on competition." Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d at 1428.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • As shown by the evidence, flavors are added to pharmaceutical preparations to function as masks for the unpleasant taste of the medications. Although one might view this improved palatability as aesthetic appeal, pharmaceutical producers tout, as fact, that flavoring is effective in achieving increased patient compliance, which, in turn, is a utilitarian feature that provides a competitive advantage. Thus, we view the issue here, as do both applicant and the examining attorney, as utilitarian functionality. See Brunswick Corp. v. British Seagull Ltd., 35 F.2d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) [color black for outboard motors functional, even though it had no utilitarian effect on the mechanical operation of the engines, because it provided competitive advantages in the ease of coordination with a variety of boat colors and reduction of the apparent size of the engine]. The Supreme Court, in its Qualitex decision, cited, with apparent approval, the Federal Circuit's decision in Brunswick as an example of a situation where color has a utilitarian function.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • We view the Federal Circuit's language in Brunswick regarding competitive need to be applicable to applicant's attempt to register its orange flavor: "The Board considered the proposed mark's functionality: "Although the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The evidence shows that people who buy outboard motors for boats like the colors of the motors to be harmonious with the colors of their vessels, and that they also find it desirable under some circumstances to reduce the perception of the size of the motors in proportion to the boats." (citation omitted) The Board concluded that the color black, applied to the engines, is de jure functional because of competitive need. ***** The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board's legal reasoning and no clear error in its factual findings...All outboard engine manufacturers color their products. These manufacturers seek colors that easily coordinate with the wide variety of boat colors. The Board found that the color black served this non-trademark purpose. In addition, the Board found that the color black serves the non-trademark purpose of decreasing apparent object size. The record showed that these features were important to consumers. Unlike the color pink in Owens-Corning, the Board found a competitive need for the color black. Thus, the Board concluded that registration of Mercury's proposed mark would hinder competition. The court discerns no clear error in the Board's findings." Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d at 1121; 1122-23.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • As stated by the Federal Circuit in Brunswick, "[a]s with any mark, the test for de jure functionality hinges on whether registration of a feature hinders competition, and not whether the feature contributes to the product's commercial success." 32 USPQ2d at 1124.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • In the Brunswick case, color compatibility and the ability to decrease apparent engine size supplied a competitive advantage. See also In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) [pink skin color held functional for wound dressings].
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • In the same way, applicant's applied-for orange flavor is functional. Just as in the case of Brunswick wherein the color black did not make the outboard engines work better, applicant's orange flavor does not make the medicine intrinsically any more effective in treating depression. Rather, like the advantages of color compatibility and reduction in apparent engine size afforded by the color black, applicant's orange flavor makes its antidepressant tablets and pills more palatable for patients, resulting in increased patient compliance, and thereby supplying applicant with a competitive advantage. Registration by applicant would hinder competition by placing competitors at a substantial competitive disadvantage.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • As indicated above, the Board has not had an opportunity to rule on the registrability of flavor as a trademark until this case. Moreover, there is a dearth of case law from other tribunals squarely addressing this issue. One case that dealt with the functionality of flavor, and that has applicability to our decision herein, is William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924).
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The Supreme Court refused to find that Lilly had exclusive rights in the brown color of the quinine preparation, which was due to the presence of chocolate as a masking agent and suspension medium. The Court stated: "Chocolate is used as an ingredient, not alone for the purpose of imparting a distinctive color, but for the purpose of also making the preparation peculiarly agreeable to the palate, to say nothing of its effect as a suspending medium. While it is not a medicinal element in the preparation, it serves a substantial and desirable use, which prevents it from being a mere matter of dress. It does not merely serve the incidental use of identifying the respondent's preparation and it is doubtful whether it should be called a nonessential. (emphasis added)(citation omitted)."
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Although the Court did not use the term "functional," the Court, in suggesting that the chocolate was not "nonessential," essentially concluded that chocolate was functional. In so holding, the Court observed the following: "The use of chocolate as an ingredient has a three-fold effect: It imparts to the preparation a distinctive color and a distinctive flavor, and to some extent, operates as a medium to suspend the quinine and prevent its precipitation. It has no therapeutic value; but it supplies the mixture with a quality of palatability for which there is no equally satisfactory substitute. (emphasis added)"
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Thus, the Court appears to be stating that the chocolate was functional because, among other things, its flavor made the medicine palatable; the flavor "serves a substantial and desirable use, which prevents it from being a mere matter of dress." As the Court later articulated the legal standard in subsequent cases, the chocolate, including the chocolate flavor, was "essential to the use or purpose of the product." Qualitex Co. v. Jacobson Products Co., 34 USPQ2d at 1163-64. The same can be said concerning applicant's orange flavor.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • In sum, the evidence clearly shows that the medicinal ingredients in pharmaceuticals generally have a disagreeable taste that may be masked so that patients will be more likely to take the medicine. Therefore, flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade. To allow registration of "an orange flavor" as a trademark would give applicant potentially perpetual protection for this flavor, resulting in hindrance of competition. See Jerome Gilson and Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks, 95 Trademark Rep. 773, 800-01 (July-August, 2005) ["One substantial impediment to enforcement of flavor marks is functionality. Certain flavors may be found to be functional because they need to be available to the competition."]; and Nancy L. Clarke, Issues in the Federal Registration of Flavors as Trademarks for Pharmaceutical Products, 1993 U. Ill. L. Rev. 105, 132 ["[I]f the Patent and Trademark Office or the courts are asked to grant trademark status to the flavor of a prescription pharmaceutical product, they should refuse to do so. The Patent and Trademark Office and the courts may rely on the utilitarian functionality doctrine and on practical considerations to deny legal protection to flavors on this type of product."].
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself. In re Morganroth, 208 USPQ 284 (TTAB 1980). In the present case, the critical inquiry becomes: Would the "orange flavor" sought to be registered be perceived as a source indicator or merely as a flavor of the pharmaceutical"
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • To state the obvious, virtually everything that humans put in their mouths has some sort of flavor: from food to wine to toothpaste to pharmaceuticals. As shown by the evidence of record, it is standard practice within the pharmaceutical industry to flavor medicines to make them more palatable. This was true long before the application in this case was filed. Indeed, the evidence shows that there are at least two entities whose businesses are devoted solely to manufacturing flavorings to add to medicines to make them more palatable. Because of this common practice, consumers would not view the flavor of a pharmaceutical as a trademark; rather, they would consider it to be an inherent feature of the product that renders it more appealing. In this respect, flavor is analogous to product design and color. As stated by the Supreme Court: "In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs--such as a cocktail shaker shaped like a penguin-- is intended not to identify source, but to render the product itself more useful or more appealing." Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000).
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • There is nothing in the record to indicate that "an orange flavor" for applicant's antidepressants would be perceived as a trademark for them. On the contrary, the record shows that an orange flavor is used in numerous medicines. As a result, consumers would not view the orange flavor of an antidepressant tablet or pill as a trademark; rather, they would consider it only as just another feature of the medication, making it palatable. To be sure, the record is completely devoid of any evidence of consumer recognition of applicant's "orange flavor" as a trademark.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Inasmuch as flavors, including orange, are a common feature of pharmaceuticals, we find that consumers would not view applicant's orange flavor as a trademark. See Jerome Gilson and Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks, supra at 801 ["Consumers may not see flavor in a product as a trademark. To them, it may be just another feature of the goods."].
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Applicant's contention that its orange flavor is so unique and distinctive that it deserves trademark protection is not persuasive. In this connection, we note that applicant has applied to register merely "an orange flavor," without limiting its application to a particular type of orange flavor. Although the examining attorney accepted the description "an orange flavor" as adequate, this description hardly describes any particular orange flavor, let alone applicant's purportedly distinctive orange flavor. If a registration were to issue for the mark with this description, applicant would gain exclusive rights to all flavors of orange, not just the "unique" orange flavor that applicant claims it has.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Even if we were to treat applicant's application as being for its "unique" orange flavor, we would find that applicant's flavor fails to function as a mark. 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. As previously discussed, flavor, including an orange flavor, is so intrinsic a feature of pharmaceuticals, that consumers will not perceive a flavor, even a "unique" orange flavor, as a trademark unless they have been educated to perceive it as such.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Although our decision is based on the analysis set forth above, we are not blind to the practical considerations involved in the registration of flavor marks. Flavor perception is very subjective; what applicant considers to be a unique and distinctive orange flavor may be considered by patients as simply an orange flavor. Moreover, the Office's examination of flavor marks, not to mention litigation at the Board, would be very problematic.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Further, it is not clear how taste would as a practical matter function as a trademark. A consumer generally has no access to the product's flavor prior to purchase. A trademark is defined as a word, name, symbol, or device that is used by a person "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods." Section 45 of the Trademark Act, 15 U.S.C. §1127. Unlike color, sound and smell, there generally is no way for consumers routinely to distinguish products by sampling them before they decide which one to purchase.11 FOOTNOTE 11 "Further, what would be an acceptable specimen of use in this case" Without ingesting applicant's antidepressant tablet or pill, there is no way to taste the purportedly "distinctive" orange flavor that applicant claims as its trademark. Would the orange flavor used in a placebo tablet or pill (submitted as a specimen) taste the same as the "distinctive" orange flavor masking the bitterness of applicant's antidepressant" And, the same flavor may taste different to different consumers. See n. 10, supra. Given that the same flavor may be described in a variety of different ways, a detailed description of the flavor on labels, packaging, etc. would not be sufficient."
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Thus, the consumer, in making a purchasing decision involving either a prescribed medication or an over-the-counter medication, is unable to distinguish one pharmaceutical from another based on flavor. Consequently, it is difficult to fathom exactly how a flavor could function as a source indicator in the classic sense, unlike the situation with other nontraditional trademarks such as color, sound and smell, to which consumers may be exposed prior to purchase.
  • Any registration of a flavor requires a substantial showing of acquired distinctiveness.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • Thus, any registration of a flavor requires a substantial showing of acquired distinctiveness. Evidence of acquired distinctiveness was not introduced in this application. See, e.g., Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 54 USPQ2d at 1068, citing Qualitex Co. v. Jacobson Products Co., Inc., 34 USPQ2d 1162-1163. See also TMEP §1202.05(a) (4th ed. 2005) ["The burden of proving that a color mark has acquired distinctiveness is substantial."]; and TMEP §1202.13 (4th ed. 2005) ["The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial."].
In re N.V. Organon, Serial No. 76467774, (TTAB 2005) Grand Total
In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006) 1
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002) 1
In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) 1
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) 1
In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) 1
Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) 1
In re Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998) 1
Brunswick Corp. v. British Seagull Ltd., 35 F.2d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) 1
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) 1
In re Clarke, 17 USPQ2d 1238 (TTAB 1990) 1
In re Deere & Co., 7 USPQ2d 1401 (TTAB 1988) 1
In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) 1
In re Owens Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) 1
In re Morton-Norwich Products Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982) 1
In re Morganroth, 208 USPQ 284 (TTAB 1980) 1
In re General Electric Broadcasting Co. Inc., 199 USPQ 560 (TTAB 1978) 1
William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924) 1
Grand Total 17 17

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.

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