In re Pohl-Boskamp GmbH & Co., 106 U.S.P.Q.2d 1042 (TTAB Feb. 25, 2013)

TTAB Cases

In re Pohl-Boskamp GmbH & Co., 106 U.S.P.Q.2d 1042 (TTAB Feb. 25, 2013)

CASE SUMMARY

FACTS

Pohl-Boskamp GmbH & Co. ("Pohl-Boskamp"), a pharmaceutical company, applied to register two sensory marks: a peppermint flavor and peppermint scent for a nitroglycerin lingual spray used to relieve angina (chest pain) that results when the heart fails to receive sufficient blood and oxygen. The medication is sprayed under the user's tongue, widening and relaxing the blood vessels to allow for increased blood flow to the heart, thereby relieving acute pain.

The trademark examiner refused to register both marks, finding that the peppermint flavor was functional and that neither mark had acquired secondary meaning. Applicant Pohl-Boskamp appealed the denials.

ANALYSIS

The TTAB evaluated both the flavor and scent marks according to the functionality factors set forth in In re Morton-Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982) ("Morton-Norwich Factors"). In particular, the TTAB reviewed (1) the existence of a utility patent disclosing the utilitarian aspects of the design; (2) advertisements in which the designer promotes the functional aspects of the design; (3) the availability of functionally equivalent alternative designs; and (4) evidence this design was chosen for its cost-saving manufacturing process.

As both the flavor and scent marks at issue arose from Applicant's use of peppermint oil as an ingredient in its angina spray, the functionality determination was somewhat consolidated. In reviewing the four factors, Applicant argued that it had no application or registration for a utility patent covering this particular feature, that it does not promote any functional aspect of the flavor or scent in its advertisements, and that peppermint oil is a nonactive ingredient and serves no therapeutic purpose (i.e., the product would have been taste- and odor-free, and thus the peppermint flavor did not mask any unsavory taste). This last argument was likely an attempt to distinguish the case from In re N.V. Organon, 79 U.S.P.Q.2d 1639 (TTAB 2006), where the applicant's registration was refused for an orange-flavored antidepressant on functionality grounds because the flavoring masked an otherwise unpleasant taste.

While acknowledging that Applicant had no patent on the feature, the TTAB affirmed the examiner's finding of functionality based on a third-party patent disclosing that peppermint oil increases the rate at which the...