Texas Style Pizza In New York? Get Outta’ Here - Fordham Intellectual Property, Media & Entertainment Law Journal
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Texas Style Pizza In New York? Get Outta’ Here

Texas Style Pizza In New York? Get Outta’ Here

Smells, sounds and sights are often said to bring people to a different time and place, to cause strong memories and associations to rush back into your mind. Many would say taste brings to life those same strong memories and associations to a specific time, place or…. pizza?Ask any New Yorker where they get their favorite slice and you will be sure to hear, in all its wonderfully cheesy detail, the intricate taste and feel that makes it the best in the city. One Texan is trying to change the pizza landscape in the city with arguably the best pizza in the world.

Trademark law at its core is aimed at the protection of those words, names, symbols that identifies a particular good. It is the things that let us spot a particular brand of soda or a handbag from a mile away without ever reading the label. One Texan is claiming that the flavor of his pizza can do the same. New York Pizzeria Inc. (“NYPI”) filed a suit against a former employee alleging infringement of the NYPI’s flavor and argued that the “specially sourced branded ingredients and innovative preparation techniques contribute to the distinctive flavor.”

Judge Costa cited to the ubiquitous trademark case Qualitex Co. v. Jacobson Products Co., Inc.  The parties in Qualitex disputed about whether a color (specifically the color of dry cleaning mats) could be trademark eligible.  The court in Qualitex held that colors, in most cases, are not inherently distinctive.  Therefore, in order for a color to obtain trademark protection it must have secondary meaning within the marketplace.  Judge Costa states “that there is ‘no special legal rule’ that prevents flavor from serving as a trademark. ”  He further explained that similar to the trademark nature of color in Qualitex, in order for flavor to be gain a trademark it requires secondary meaning.

However, the key point that Judge Costa points out in his decision is a basic distinction between various types of intellectual property.  Trademarks are words, names or symbols that identify a particular product.  In contrast, utility patents protect functional inventions and their utility.  Judge Costa noted the distinction between the two types of intellectual property law when he cited a Trademark Trial and Appeal Board (TTAB) case, In re N.V. Organon.

In re N.V. Organon, was a case in which a pharmaceutical company attempted to trademark the distinctive orange flavor of its medicine.  The TTAB ruled that this was out of the realm of trademarks since it was a utilitarian function.  If a trademark was granted to a utilitarian function it would unfairly hinder competition, since trademark law is protected for a duration outside, and potentially longer, than that granted under patent law.

Judge Costa went on to say that the scrutiny given to the flavor of pizza and its relation to its utility is even higher than medicine, stating, “[t]he flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.”

Judge Costa dismissed the trademark infringement case calling the claim “plainly half-baked,” reported the IPKitten  Blog.

James Breen

James Breen is a second-year student at Fordham University School of Law and a staff member of the Fordham University School of Law Intellectual Property, Media and Entertainment Law Journal.