Saturday, March 16, 2013

Can You Trademark the Peppermint Scent of a Drug?

A recently decided case has some fascinating implications for anyone attempting to register scent or flavor as a trademark.

The case is In re Pohl-Boskamp GmbH & Co. KG, and it was issued on February 25, 2013 by the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. The ruling itself can be found here.

The product in question is Pohl-Boskamp’s Nitrolingual Pumpspray, a device that delivers a peppermint infused spritz of nitroglycerin beneath the user’s tongue. (Sublingual nitroglycerin is a vasodilator that eases the angina associated with coronary artery disease.) The company tried to trademark the peppermint scent/flavor of its product and was denied by the trademark examiner. They appealed and the new ruling—a final denial—is the result.

It is well established that smells can be trademarked in the United States (the EU is another story). So what was the problem with granting a mark to Pohl-Boskamp? Turns out it was two-fold.

First, trademarks can’t be functional. Back in 1924, the Supreme Court ruled that a chocolate flavor added to a pharmaceutical couldn’t be trademarked because it had the functional effect of masking the bitter taste of the medicine. A trademark must be an inessential, incidental feature of the product that serves only to identify the goods in question.

OK, but Pohl-Boskamp never claimed that the peppermint in its product was functional. Yes, said the trademark examiner, but I found a patent that claims peppermint and other menthol-containing substances are vasodilators that enhance the effect of nitroglycerin. (USPTO rules allow third-party patents to be cited in administrative proceedings . . . who knew?) Therefore, said the examiner, the peppermint is functional and can’t be trademarked.

As if that weren’t good enough, the TTAB supplied a second reason. It found that there are other, similarly scented, vasodilators currently on the market. Thus the peppermint is not sufficiently distinctive to qualify as a trademark.

It seems to me that this decision by the TTAB adheres closely to previous interpretations of trademark law and doesn’t do much to further restrict the use of scent/flavor in trademark.

P.S. I found this summary of the case by the intellectual property law firm Mandour & Associates to be quite helpful.

P.P.S. The Mandour & Associates article was reprinted word for word, without attribution, by China Trademark & Patent Law Office, “a professional intellectual property service firm” headquartered in China. What else do you need to know about communist China’s respect for intellectual property?

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