Happy to Deliver To You This Trade Mark Infringement in Pizza Flavor Case

New Yorkers love their pizzas and have definitive opinion about them, including the way to eat them. Newly elected New York City Mayor Bill de Blasio even created a controversy when seen shortly after his election eating a pizza with a knife and fork, instead of using the New York method, folding a slice of pizza in half length-way and eating it with one’s hands. One of my proudest moments ever as a New Yorker is to have been asked by a NYC policeman where I had bought the slice I was eating on the street, using the proper New York way, of course!

Nobody Ever Ate a Pizza New York Style  Better than Tony

This method is well adapted to New York-style pizzas, which are pizzas with a thin crust, a lot of cheese, and crunchy edges. The various recipes for tomato sauce are jealously kept by their makers.  

New York pizza is very good, but can a particular pizza flavor be trademarked? A Texan pizzeria thought so, but Judge Gregg Costa from the Southern District of Texas was not convinced, calling Plaintiff’s flavor of its pizza infringement claim “plainly half-baked.” The case is New YorkPizzeria, Inc. v. Syal et al, 3:13-cv-00335.

Plaintiff was New York Pizzeria Inc. (NYPI), a restaurant franchisor. It filed a suit against one of its former employee and against Ravinder Syal, a restaurateur, alleging that Defendants conspired to steal its recipes by using, without permission, the username and password of a NYPI franchisee to log into a site to download NYPI’ s trade secrets, including recipes and manuals.

Plaintiff claimed violation of the Computer Fraud and Abuse Act and the Stored Communication Act, which I will not discuss in this post, and also claimed trade mark infringement for copying NYPI’s “distinctive flavors,” and trade dress infringement for copying NYPI’s “distinctive plating methods.”

Can a Flavor be Trade Marked?

Plaintiff claimed infringement of its trade mark in the flavor of its food and argued that the “specially sourced branded ingredients and innovative preparation techniques contribute to the distinctive flavor” of its products and that, by using the same ingredients and processes, Defendants have infringed its trade mark.

While the Lanham Act provides a trade mark infringement cause of action for using “any word, term, name, symbol or device , or any combination thereof “ which are confusingly similar to a trade mark, the federal law does not mention “flavor.”

Plaintiffs cited the famous Qualitex case, where the U.S. Supreme Court held in 1995 that colors may be trade marked if they have obtained secondary meaning and thus are not merely functional, but, rather, indicate the source of the product.  

Judge Costa agreed that a flavor could be trade marked,  but added that it would have to identify the source of the product. He noted that, just as colors, flavors cannot be inherently distinctive and must acquire secondary meaning to be used as a trade mark.

Judge Costa also noted that flavors are functional and that the functional features of a product are not protectable. The Supreme Court defined in a footnote in Inwood Laboratories, Inc., quoted in Qualitex, that the functionality doctrine “forbids the use of a product's feature as a trademark where doing so will put a competitor at a significant disadvantage because the feature is "essential to the use or purpose of the article" or "affects [its] cost or quality."

Judge Costa noted that “[t]he functionality doctrine is a significant hurdle for any party seeking to protect a flavor as a trademark,” citing the In re N.V. Organon Trademark Trial and Appeal Board (TTAB) case, where the TTAB denied trade mark registration to the orange flavor of a pharmaceutical pill, as the flavor has for function to cover the unpleasant taste of the medicine.

For Judge Costa, the functionality hurdle is even higher for the flavor of a particular food, as “[t]he flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.” He dismissed the trade mark infringement pizza flavor claim.

Can a Particular Way to Present Food on a Plate be a Trade Dress?

Plaintiff also claimed “plating infringement,” that is, infringement of a particular way to present food which amounts to a trade dress. The Court recognized “that there may be some rare circumstances in which the plating of food can be given trade dress protection.” This may occur if a particular way to present food is inherently distinctive or if it has acquired secondary meaning, and if it serves no functional purpose.

Could this Charcuterie Plate be a Trade Dress?

The Court cited a UCLA Law Review article written by Naomi Straus, Trade Dress Protection for Cuisine: Monetizing Creativity in a Low-IP Industry, where the author argued that “signature dishes” could be protected by trade dress (see p. 218 of the article, with pictures of some of these signatures dishes starting p. 221).

Plaintiff’s way to present food was not found, however, to be protectable by trade dress, because Plaintiff had merely described its way to present food as including, but not being limited to “its baked ziti, eggplant parmesan, and chicken parmesan dishes,” but did not explain what exactly made its presentation of the food distinctive.

Just imagine, if the Court would have agreed to protect such way to present food, no other restaurant in the WORLD would have been able to so present baked ziti, eggplant parmesan and chicken parmesan dishes… 

Image is courtesy  Flickr user RBerteig under a CC BY 2.0 license.