September 2011 #1. Traditional and nontraditional Trademarks: Illustrated by Food Wars, Chef Egos and the Malasada Truck.

• Author: by Martin S. Loui

Hawaii Bar Journal

2011.

September 2011 #1.

Traditional and nontraditional Trademarks: Illustrated by Food Wars, Chef Egos and the Malasada Truck

Hawaii State Bar JournalSeptember 2011Traditional and nontraditional Trademarks: Illustrated by Food Wars, Chef Egos and the Malasada Truckby Martin S. LouiINTRODUCTION

A challenge restaurateurs and chef-owner entrepreneurs face is the mastering of the secret sauce for building a base of return customers and expanding that base. Developing n ew and interesting cuisine is part of a chef's and restaurateur's repertoire. This is especially important in a competitive industry where there is no shortage of food service establishments or initiatives by chefs and restaurant goers eager for new culinary experiences. In its simplest characterization, the goal of the secret sauce is to cover the dichotomy of capturing return diners who savor a particular dish, and diners seeking out new culinary creations.

Enter that new breed of food and beverage entrepreneur; new to the food scene and seeking market penetration. More and more common, they may be launched by fundraising from investors looking for a return on investment ("ROI"). Other food service establishments, such as franchises, may be looking to expand operations. Whether there is in fact a recipe for the secret sauce that is applicable to everyone is debatable but one mechanism that nearly every business relies upon, whether consciously or subconsciously, is brand development and placement to capture market share. Brand development forces chef-owners and restaurateurs to go beyond their duties in the kitchen and exercise business acumen in utilizing intellectual property ("IP") to create value for their business. Usually, that type of IP facilitates ROI and involves the field of trademark law. IP may be used to highlight and monetize the technical and creative culinary skills of the chef or restaurateur.

This article is a basic introduction to traditional and non-traditional trado mark law. Examples of trademarks used in the food industry illustrate concepts that may be applicable to other channels of trade. The concepts and techniques described here may help entrepreneurs build a brand by distinguishing themselves, expand their base of customers using traditional and nontraditional trademarks , and create an intellectual property portfolio attractive to investors.

Part I will introduce basic concepts of trademark law. Part II will describe the general landscape comprising the types of nontraditional trademarks. Part III will provide several examples of such marks seen in the Hawaiian topography. Part IV will discuss additional tools for the culinary entrepreneur having claims to fame marks, licensing opportunities and signature dishes. Part V will conclude with the secret sauce comprising at least one part business acumen and one part strategic exploitation of opportunities for brand building.

TRADEMARK BASICS

Trademarks and service marks are traditionally known to be made up of "any word, name, symbol, device or any combination thereof"(fn1) that the public associates with a single source for goods and services, respectively. Both trademarks and service marks are sometimes collectively referred to herein as "marks" or "trademarks." They are both source indicators. Those marks containing words may consist of ordinary words that can be found in a dictionary or be coined words or phrases and they may include letters and/or numerals. When the mark is a design, it may, for example, include an abstract illustration, a reproduction of an object, or an image or some stylization, typically serving as a logo.

The Lanham Tradem ark Act of 1946 governs trademark rights under federal law.(fn2) The source of Congressional power to reg u l ate tra d e m a rk rights is derived from the Commerce Clause, which does not create exclusive fe d e ral rights for tra d e m a rk law s. Accordingly, various state laws for the protection of trademarks may be perti-nent,(fn3) as well as common law rights. In Hawaii, state statutes serve to regulate trademarks, unfair methods of competition, deceptive trade practices, trademark dilution, and trademark counterfeiting, by way of examples.(fn4) Outside of Hawaii and the United States, various countries may grant registration for various types of marks; while some countries may not grant registrations at all for certain types of marks.(fn5)

TYPES OF NON-TRADITIONAL TRADEMARKS

The Lanham Act has been interpreted to encompass nontraditional marks by implication, that is, due to their non-exclusion from the definition of "trademarks."(fn6) In 1995, the Supreme Court's landmark Qualites case "trumpeted that a trademark could be 'almost anything at all that is capable of carrying meaning."'(fn7) Fast forward to 2011, where one commentator has remarked, "in the exotic world of the nontraditional and beyond... , when it comes to registering such marks[,] the United States Patent and Trademark Office (USPTO) is your friend."(fn8)

Within this context, nontraditional trademarks "are [relative] newcomers."(fn9) They may take various forms, such as color, motion, sound, scent, taste (flavor), touch (texture) and thiee-dimensional configurations in the nature of product design or shape and packaging. The nature of some nontraditional marks may be characterized by their appearance, wherein one or more colors may be applied to the products or packaging, or the look and feel of a business in the case of retail establishments.(fn10) Their applications may arise within the context of trade dress, which covers the "overall appearance and impression of a product, and even some product marketing schemes."(fn11) In the restaurant trade, "[t]rade dress can [further] include service features such as retail decor, architectural features [of the exterior of the retail business] , menu and layout."(fn12) Examples of several types of nontraditional marks follow.

Color may be protectable as a trademark, not where it is merely func-tional,(fn13) but where it is capable of distinguishing goods or services.(fn14) "Color per se cannot be inherently distinctive."(fn15) Therefore, acquired distinctiveness, also known as secondary meaning, must be attained for a color mark to be protectable and enforceable.(fn16) For example, the color purple has been applied to a packaging (box) for brownies.(fn17) Phillips Foods, Inc., famous for Maryland blue crab meat(fn18) has trademark protection for the black color applied to the surface of its packaging, a can containing crab meat.' Labatt Brewing Company Limited has protected the color blue applied to the pull tab of its aluminum cans containing beer(fn19) Color marks typically arise where a single color has become a source indicator.

Trademarks that include motion may also be protectable. "These marks are typically the closest to traditional logo marks of all the nontraditional trademarks; they just add the dimension of movement."(fn20) Motion marks may include moving images, which can combine colors, sounds and aspects of product designs.(fn21)

Sound embodied as a jingle, an ordinary sound heard in everyday life, a piece of music, a short extract from a musical work, the full length musical work, or other sounds may be protectable as a trademark,(fn22) provided it is "capable of identifying and distinguishing goods and can be registered if consumers associate it with the source of goods."(fn23) For example, a Costa Rican company has registered the sound mark of an eagle's squeal for beer,(fn24) while the restaurant chain owned by Red Robin International, Inc. has protected the acapella sound of YUMMM.(fn25) Additionally, the Taco Bell Corp. has protected the "bong" sound for its carry-out restaurant services.(fn26)

Various scents may also be added to and associated with products and servic-es.(fn27) "Distinctive, non-functional fragrances are eligible for federal trademark registration."(fn28) For example, the scent of strawberry "impregnated" within toothbrushes has been protected as a scent mark,(fn29) and the scent of peach for file folders has also been protected via a federal registration.(fn30) There is presently an application for the coconut scent used in connection with retail store services, that include the sale of various merchandise such as...