TTAB affirms refusal to register peppermint flavour and scent trademarks

Pohl-Boskamp (PB), a pharmaceutical company, applied to register two proposed marks - a peppermint flavour and a peppermint scent as used in an oral nitroglycerin spray for chest pain. The product is sprayed onto or under the tongue. The label indicated that peppermint oil was an inactive ingredient, but that feature was not otherwise promoted.

In In re Pohl-Boskamp GmbH & Co KG (Serial Nos 85007428 and 85008626, February 25 2013), the Trademark Trial and Appeal Board (TTAB) affirmed the trademark examiner’s refusal to register on two grounds. First, the proposed flavour mark was deemed functional in that it “affects the quality” of the nitroglycerin and therefore failed to function as a trademark. Section 2(e)(5) of the Trademark Act precludes registration of any matter that as a whole is functional. Second, the proposed flavour mark failed to function as a trademark because the flavour was likely to be perceived as an attribute of the product rather than as an indicator of source. As to the peppermint scent application, the TTAB affirmed the trademark examiner’s finding that the proposed scent mark did not function as a trademark for the same reasons as the proposed flavour mark.

The TTAB first agreed with the examiner’s Section 2(e)(5) refusal. Relying on Supreme Court precedent, the TTAB stated that the Trademark Act deems a trademark functional if it essential to the use or purpose of the goods. Pohl-Boskamp argued that the peppermint oil in its product provided no therapeutic purpose and was therefore not essential. However, the examiner cited a US patent which showed that, even though the peppermint component is inactive, its use in nitroglycerin spray could improve the effectiveness of the nitroglycerin spray by reducing side effects. The TTAB agreed that the patent showed that peppermint makes the product work more effectively. That improvement could affect Pohl-Boskamp’s competitors. The TTAB stated: 

“It is apparent that if competitors of [Pohl-Boskamp] wish to improve their products by the addition of peppermint..., those products would include, to some extent, a peppermint flavour that could infringe upon the trademark rights that [Pohl-Boskamp] claims.” 

If Pohl-Boskamp was found to have trademark rights and its competitors wanted to use peppermint to improve their formulations, competitors would either have not to use peppermint or find a way to hide the flavour in order to obtain the improvement. Such a right to exclude would potentially last well beyond the expiration of any patent.

The TTAB also looked at whether the proposed marks functioned as trademarks. Flavour and scent marks can never be inherently distinctive, and an applicant must show acquired distinctiveness. Pohl-Boskamp submitted declarations stating that the proposed marks had acquired secondary meaning. Pohl-Boskamp’s evidentiary showing was impressive, including 23 physician declarations. The TTAB discounted the declarations, however, because they were largely identical and appeared not to be in the declarants’ own words. There was evidence of other peppermint uses, which showed that consumers were more likely to perceive the peppermint flavour and scent as attributes of ingestible products rather than as trademark. 

The Trademark Act does not preclude either a flavour or a scent as a trademark. In fact, the TTAB explicitly recognised previous decisions registering such marks where appropriate. Here, in view of the high standard for showing that a flavour or a scent mark has achieved secondary meaning, the TTAB ruled that Pohl-Boskamp had not established any registrable trademark rights. As a result, other peppermint oils will continue to smell, and taste, just as sweet.

Stephen M Schaetzel, Meunier Carlin & Curfman, Atlanta