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No matter how novel or distinct, the taste of food is not subject to trademark protection, at least according to a recent Southern District of Texas court decision on a Motion to Dismiss. In the case, Russo’s New York Pizzeria (a Texas restaurant chain) sued Gina’s Italian Kitchen, among others, for what is essentially taste infringement.  In its claim, Russo alleged that because of its specially sourced ingredients and innovative preparation and preservation techniques, its products had a distinct flavor and, thus, by using those ingredients and processes, Gina had infringed Russo’s protected trademark interest in the distinctive trademark flavor of its products.




In evaluating Russo’s claim, the court spelled out the recipe that needs following for trademark infringement to be ripe for consideration.  In doing so, the court acknowledged that there is no special legal rule that prevents flavor from serving as a trademark.  Rather, it is the source-distinguishing ability of the mark that permits it to serve a trademark purpose and the Trademark Act, in theory, encompasses almost anything that is capable of carrying meaning.  Although flavor/taste can “carry meaning,” the court explained that it would be hard to swallow the taste infringement claim unless Russo could help the court chase it by proving that ( i ) its flavor distinguishes the source of its product (i.e., is distinctive) and (ii) that its flavor is not a functional feature of its food (the court noted that, “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.”).


Without discussing whether Russo’s flavor is distinctive, the missing ingredient that spoiled Russo’s taste infringement claim was functionality.  In expressing its distaste for Russo’s “half-baked position” (judge’s words), the court noted that, when it comes to food, “functionality” may always come out undercooked because, “[p]eople 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.”


In further grilling Russo, the court noted that Russo was unable to cite any other case where such a creative claim was palatable.  That said, Coke flirted with the idea of suing Coke Zero for taste infringement in the past, but it’s doubtful the court here would’ve had the appetite to consider this as precedent.


Although Russo was left with a sour taste in its mouth regarding the dismissal of its flavor infringement claim, there are other forms of protection that could be appetizing in similar situations, such as trade secret protection (misappropriation of which, Russo also asserted against Gina in the alternative).  With the taste infringement claim now shredded, it will be interesting to see whether this lawsuit simmers for a bit or starts to sizzle.