The US Trademark Trial and Appeals Board (TTAB) will next week decide on an application which will redefine what rights owners can register and protect, if it is approved.
On December 7, the TTAB will rule on Akzo-Nobel subsidiary Organon's attempt to register the orange flavour of its soluble antidepressant, Remeron SolTab, as a trade mark.
Richard Lehv, trade mark specialist at Fross Zelnick Lehrman & Zissu, said: "The TTAB will allow unconventional trade marks. They're not against them but they certainly take a closer look at them."
Organon first applied for the trade mark in November 2002. The US Patent and Trademark Office (USPTO) rejected the application in April 2003.
The USPTO found the mark "neither identifies nor distinguishes the goods of the applicant from those of others nor indicates their source" and "comprises a feature of the identified goods which serves a utilitarian purpose".
The USPTO argued that the orange flavour masks the unpleasant taste of the medicine and so performs a functional role. US law does not permit trade marks that are essential to the use or purpose of the product.
Organon amended its application in October 2003, claiming that the flavour did not change the drug's effect and so was not functional. The USPTO upheld its refusal and Organon appealed to the TTAB in December 2004.
Mack Webner, trade mark specialist at Sughrue Mion, said: "I see no reason why tastes shouldn't be considered for trade marks. The trick is how you describe it"
Richard Lehv said: "It raises questions as to whether you can have taste as a mark at all. It does have a consumer benefit; I don't think they'd give it a flavour that people didn't like. You don't see garlic flavour toothpaste."
"But if I were to go to the TTAB, I'd try to explain that there really are a large amount of different flavours and that the company advertises the orange flavour in a way that ensures consumers connect it with the source of the product," he added.
Added Webner: "Certainly others would follow suit if they thought they could get a taste trade mark through."
Organon appointed law firm Kenyon & Kenyon in October for the TTAB appeal, having previously handled the case in-house.
Kenyon & Kenyon, Organon and the USPTO declined to comment on the appeal.
