Can you trademark the formula of a product – descriptive trademarks – Corto v. Gemsa

Trademark law draws its strength from consumer protection laws. The rationale for granting a trademark user the exclusive right to brand goods with a trademark is to prevent consumers from being tricked into buying inferior quality goods. A trademark can be a symbol, work or short phrase. When a product manufacturer brands goods with a trademark they are granted certain exclusive rights to use the trademark in commerce. In the United States a trademark can be registered with the United States Patent and Trademark Office to strength the rights associated with the trademark.

The strength of a trademark is directly related to the distinctiveness of the trademark. The distinctiveness of a trademark is broken up into five general categories. The five categories are fanciful, arbitrary, suggestive, descriptive, and generic. Generic terms are not eligible for trademark protection, a company may use the trademark to brand their goods, but the courts are not going to stop other people from also using the trademark. The fanciful, arbitrary, and suggestive categories of trademarks are considered strong trademarks. A descriptive trademark is a word that identifies the characteristics of the product. If trademark is merely descriptive, it does not serve as a trademark because it does not serve to identify the source of the goods or services. Merely descriptive marks are not distinctive. However a descriptive mark may become distinctive if it develops a secondary meaning. A secondary meaning is when a descriptive mark is associated with one manufacturer of a product in the minds of consumers.

An example of a product manufacturer who is attempting to use a trademark which may be considered descriptive is CORTO OLIVE, L.P. v. GEMSA ENTERPRISES, 2:18-cv-06399 (C.D.CA 2018). Both companies are manufacturers of olive oil. Corto successfully registered 51-49 as a trademark with the United States Patent and Trademark Office in July 2011 and then filed an incontestability statement under section 15 in October 2016. The 51-49 trademark is used on the plaintiff’s products which are 51% olive oil and 49% canola oil. The Plaintiff’s packaging features the 51-49 trademark in green with olives and canola flowers. In 2018 the defendants started selling a 51% olive oil and 49% canola oil mix in a box decorated with olives, canola flowers and 51/49 in huge letters. Corto sued Gemsa for trademark infringement, alleging that 51/49 is confusingly similar to 51-49, and trade dress infringement, because of the similarity of the product’s boxes, in July 2018.

Most people would instantly say that the trademark is invalid. 51-49 describes what is in the box, the trademark is merely descriptive. The section 15 incontestability statement changes this. Because Corto perfected their trademark registration by filing a section 15 incontestability statement with the United States Patent and Trademark Office, the 51-49 trademark cannot be invalidated on the grounds that it is descriptive. To invalidate an incontestable trademark the defendant would have to show that the trademark is generic, has been abandoned or that the trademark misrepresents the goods.

This case is so new that the defendant has not had an opportunity to answer the complaint yet. It will be interesting to see if Gemsa comes up with a novel argument to try to get the 51-49 trademark invalidated or if this case is settled quickly.

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