Trademarking A Smell Or Scent

A Scent Trademark Is Recognized

The Lanham Act, established in 1946, represents federal trademark law. It acknowledges that conventional marks, which include any word, name, symbol, device, or combination thereof indicating a product or service's origin, can be protected when used in trade. While the act doesn't specifically mention if trademarks can be colors, smells, or sounds, the United States Patent and Trademark Office (USPTO) deduced that scents, not being expressly excluded, qualify for registration under Section 2(f) of the Lanham Act, provided they serve the purposes of a trademark. The first scent trademark was acknowledged in the 1990 decision of the Trademark Trial Appeal Board (TTAB) in In Re Clark, citing a "high impact, fresh, floral aroma akin to Plumeria blossoms.

By proving that scents can be protected with a trademark, the USPTO asserted that trademark applicants would only be allowed to register the scent as a mark if they prove that it is both nonfunctional and distinctive. Furthermore, a product feature must not be “essential to the use or purpose of the article,” not affect “the cost or quality of the article.” In other words, scents with a useful purpose are ineligible for registration. For example, The Eddy Finn Ukulele Co. trademarked a piña colada smell that they apply to a ukulele. Hisamitsu Pharmaceutical Co. trademarked a "minty" scent of their pain-relief patches - a "mixture of highly concentrated methyl salicylate (10wt%) and menthol (3wt%). For more about trademark registration client on the link!

The trademark applicant for a scent is not required to submit a drawing if the mark consists solely of a scent or other completely non-visual matter.  For a scent mark, the applicant should indicate that the mark type is "Standard Character" and should type "Scent Mark" in the "Standard Character" field. In a permitted paper application, the applicant should clearly indicate that the mark is a "NON-VISUAL MARK." The USPTO will enter the proper mark drawing code when the application is processed. 

Scent Trademarks Must Be Distinctive

All trademarks, even scent marks, must be distinctive. The scent can be inherently unique, or the smell can acquire its specific nature through consumer association with its producer. The application must have substantial proof of the requirements per TMEP 1202.13: Scent, Fragrance, or Flavor:

"When a scent is not functional, it may be registered on the Principal Register under §2(f), or on the Supplemental Register if appropriate. The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial. See In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1052 (TTAB 2013) (finding that peppermint scent mark for "pharmaceutical formulations of nitroglycerin" failed to function as a mark and noting the insufficiency of applicant’s evidence of acquired distinctiveness in light of evidence that the use of peppermint scent by others in the relevant marketplace (i.e., pharmaceuticals) tends to show that such scents are more likely to be perceived as attributes of ingestible products than as indicators of source)); cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (requiring concrete evidence that the mark is perceived as a mark to establish distinctiveness).

Flavor. Just as with a scent or fragrance, a flavor can never be inherently distinctive because it is generally seen as a characteristic of the goods. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1048 (finding that peppermint flavor mark for "pharmaceutical formulations of nitroglycerin" failed to function as a mark); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (affirming refusal to register "an orange flavor" for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills," on the grounds that the proposed mark was functional under §2(e)(5) and failed to function as a mark within the meaning of §§1, 2, and 45 of the Trademark Act). The Board has observed that it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function and consumers generally have no access to a product’s flavor or taste prior to purchase. Id. at 1650-51. Thus, an application to register a flavor "requires a substantial showing of acquired distinctiveness." In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1051-52 (noting the insufficiency of applicant’s evidence of acquired distinctiveness in light of evidence that the use of peppermint flavor by others in the relevant marketplace tends to show that such flavors are more likely to be perceived as attributes of ingestible products than as indicators of source); In re N.V. Organon, 79 USPQ2d at 1650."

The explanation should show that the fragrance takes the form of sales of the goods under the mark, brochures, advertising evidence, and statements in the form of affidavits from industry-savvy dealers or retailers recognizing the mark as a source identifier. Suppose an applicant is unable to demonstrate that a scent has acquired distinctiveness. For example, a Brazilian footwear company Grendene trademarked their bubble gum-scented jelly sandals by sending in a scented sandal as evidence! If you are unable to show distinctiveness, the USPTO will simply say that the scent doesn’t uphold the measure for the goods and can only be registered on the Supplemental Register, if at all.

Enforcement Of A Trademark Scent

Registering a trademark is crucial to safeguard a brand's identity and products from rivals. When a company files for a trademark, they emphasize that customers link the symbol with their offerings and see it as a condensed form of their reputation and marketing. Trademarks also promote efficient consumer shopping, letting customers swiftly recognize brands. However, they're only defensible when distinct from existing symbols. If a mark too closely resembles another, it risks confusing consumers.

Scent trademarks introduce a particular conundrum. It's challenging to compare scents as individual experiences vary widely due to factors like age, gender, and genetics. This subjectivity complicates infringement lawsuits since there's no straightforward way to measure scent similarity.

Currently, there's limited judicial guidance on managing scent infringement cases. Questions arise: should a jury decide if one fragrance closely mimics another? How should scents be presented as evidence or preserved for appeals? If a jury doesn't use their olfactory senses, should expert perfumers weigh in? Recent advancements in gas chromatography and mass spectrometry aim to objectively profile scents, but as highlighted in the Sherrell Perfumers Inc. vs. Revlon Inc. case, it's not foolproof for infringement detection.

As scents flood the market, without a universally accepted method for scent identification, consumer confusion is inevitable. Successfully proving infringement could be daunting without precise scent differentiation tools.

Advantages Of Trademarking A Scent

To date, there has never been a scent infringement claim brought to federal court, and only a handful of scent trademarks have been successfully registered. However, the lack of precedent has made many practitioners concerned about how an infringement claim would be handled if one were to arise. In addition, the unique nature of scents and the lack of case law addressing infringement claims casts serious doubt on the benefits of having a scent mark. 

Some of the advantages to registering a trademark include: 

• Use of the registered trademark symbol ®
• Enforcement thorough federal courts with infringement lawsuit
• Ability to file WIPO for the international use of the mark
• Monetary remedies, including infringer's profits, damages, costs, etc.

When a trademark owner registers a mark, they alert the public to its registration by displaying the small circled "®" symbol next to it. This symbol acts as a deterrent, discouraging others from adopting a similar mark. However, it's impossible to attach this "®" symbol to a scent. This limitation prompts questions about whether the registration of scent marks offers the same deterring advantage as standard tangible marks.

It important for your business to explore non-traditional trademarks beyond regular text and graphic marks.  Marks not confined to words, but rather sights, sounds, symbols, devices, packaging or colors that extend to three dimensional marks are often protectable: motion marks, position marks, hologram marks, sound marks, smell and taste marks.

Our expert legal team of Dallas trademark attorneys can assist you in exploring your trademarks.