Reinventing the Pizza Won’t Get You Trademark Protection

Originally posted 2018-07-09 1:04:06

By Christina Severino |

pizzaLast week, Judge Costa of the Southern District Court of Texas (Galveston Division) ruled against New York Pizzeria, Inc. (NYPI) on its claims for damages regarding infringement of its flavors and plating methods of its menu items. The suit was brought by former president of NYPI, Raviner Syal (Syal), claiming that he took advantage of his access to NYPI’s recipes, suppliers, and other internal documents. In doing so, NYPI claimed that Syal has created a similar restaurant chain, Gina’s Italian Kitchen (Gina’s), which includes items on its menu that mimic the flavor and uniqueness of NYPI’s cuisine.

In light of NYPI’s request for trademark protection, Judge Costa makes evident the popularity of pizza and that it is generally a commonplace item in most communities. Next, Costa delves into the theory behind trademarking, elaborating that they are granted in order to distinguish one good from another. Specifically, in citing the Lanham Act, he states that although virtually anything may be protected, it must be something unique or distinctive. While the use of fanciful words may be enough to earn trademark protection, the color of the item may not be as indicative because the consumer may not necessarily know the source of the product by strictly looking at the item’s color. Even if the consumer did not see the item, but instead tasted and identified it as pizza blindfolded, taste of the item is not enough to grant trademark protection. Trademark protection is not typically extended to products based on functional features. In the realm of pizzerias, trademarking the flavor of such an item would essentially grant a monopoly in the market to whoever received the protection.

Judge Costa discussed a potential loophole, in which NYPI could show that the physical arrangement of the menu items on the plate may have a protectable interest. Unfortunately, NYPI did not provide sufficient evidence to show they plated their menu items in a way that was uniquely distinguishable or that established a secondary meaning to consumers. Should NYPI submit a future request for trademarking protection over their plating, they would need to show that Gina’s items create a likelihood of confusion.


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