Trademarks are used by their owners to identify and distinguish their goods or services from those of another. Trademarks are identifiers. We are familiar with trademarks that consist of letters, numbers, pictures, or a combination of all three, but trademark law has consistently been found to cover anything that is capable of carrying some meaning and that can be used as an identifier for a trademark owner’s good or services.In addition to the known words and designs, trademarks have been registered or applications have been submitted for sounds, scents, flavors, product shapes, textures, light, hand gestures, and online motion marks. However, these “nontraditional” trademarks usually have a much tougher time of meeting with the Trademark Office’s strict criteria and passing a series of standard trademark tests. Flavor trademarks, in particular, pose a challenge for the United States Patent and Trademark Office (USPTO).Most flavor trademark applications are rejected due to failing to overcome the functionality doctrine expressly provided in the Lanham Act. The Act establishes that an application for registration may be refused if the trademark in question is merely functional. A product feature is functional and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. When it comes to the flavor of food, drink, or some other edible item, for example, it would be difficult to convincingly argue that flavor is not relevant. Flavor will pretty much continually be functional.There are even further hurdles for flavor trademarks to overcome. One hurdle is determining whether the proposed flavor can leave such a lasting impression as to evoke a reaction with the consumer, such as the Starbucks logo immediately bringing up the thought of coffee. Companies can spend a lot of time and money establishing their branded flavor, but it all depends upon the consumer. If the flavor isn’t distinguishable or resonate with the public, it will have no chance of obtaining a federal trademark registration.There is also the argument that trademarking flavors can inhibit competition within the field. For example, it would be unfair to competitors within the candy market if one company registered a flavor trademark for the cherry flavor used in candy. If companies were constantly being brought up on infringement charges, they would be hesitant to expand upon flavor, and impede innovation within our food supply, which, to many, would be a very sad thing indeed.
An attorney is not required when filing for a federal trademark registration with the United States Patent and Trademark Office. However, they are useful before, during, and after filing of your application. An attorney that specializes in trademark and intellectual property matters has years of experience dealing with all kinds of issues that arise through the trademark process, and this experience helps in anticipating what must be addressed in your trademark application. This experience is something the typical applicant does not have, and therefore, an attorney will help the process along tremendously. It’s not difficult to understand why most applicants choose to use the services of private trademark attorneys.Before Applying for Trademark RegistrationA private trademark attorney can perform a search of all current federal and state trademark registrations that could possibly be confused with your proposed trademark. They can also perform a search of all “common law” (rights based on use of the mark and not on a federal trademark registration) use of the mark. This will help tremendously with the process, as you wouldn’t want any potential costly disputes in the future concerning your use of a mark that has been previously registered or is currently in use. This also lets you know if your mark is likely to be refused before beginning the process of trademark registration.During the Application ProcessYour attorney will be in contact with the USPTO on your behalf and will apprise you of any updates concerning your application. Any problems with your application or refusals to register your mark will be addressed promptly. Years of experience in addressing the Trademark Office’s concerns aids your attorney in understanding exactly what the Trademark Office is looking for and what changes must be made. This cuts down time and effort spent on making edits and addressing all issues at once, rather than continuously receiving notices from the Trademark Office that changes must still be made.After you Receive your RegistrationThe USPTO does not enforce trademark rights, and you alone are responsible for making sure your mark is not being used without your authorization. A trademark attorney has experience in trademark infringement matters and has the experience to decide whether or not someone else’s use of your mark constitutes trademark infringement. If infringement is found to exist, a trademark attorney has the gravitas to address the issue with the other party on your behalf.