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To Trademark a Smell

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Biletsky Law - Scent trademark

Trademarks are more than just logos and catchy phrases…

When a trademark comes to mind, people typically think of logos, brands, and the names of products or services. But that’s not all that is capable of being trademarked. In the United States, non-conventional trademarks are capable of being registered as well. These non-conventional trademarks include colors, sounds, tastes, and scents.

For scent trademarks (or olfactory marks), it wasn’t until 1990 when the first smell was successfully trademarked. That first scent trademark was for a brand of sewing thread and embroidery yarn which contained a scent “reminiscent of Plumeria blossoms” (In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990).

Although there has been successful registrations (mostly on the Supplemental Register) of scent marks since then, it is not necessarily the easiest thing to trademark. In the United States, a valid trademark must not be functional and must be distinctive. Proving non-functionality requires a showing that the scent be not “essential to the use or purpose of the article or if it affects the cost or quality of the article.” (Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995)). This essentially means that those naturally occurring smells of a product are likely functional as they perform a significant function in the existence of the product.

Take for instance the scent of perfume. The scent of a perfume is inherent to the product since it is the function of the smell that is the basis for the product. In other words, if the product has a natural scent or if the product’s scent is what makes consumers buy the product, then the scent will likely not be able to be trademarked.

Even after being able to show that the scent is not functional, the distinctive component can be another hurdle in the trademark process. Distinctiveness is one of the core concepts of trademark law and deals with how “descriptive” the mark is of the product. How distinctive the mark is depends on whether there is a relation between the mark and the product or service. For instance, if a lawn mower company was named “Lawn Mower” the name would be very descriptive of the product and therefore, the trademark would not be distinct from the product and the trademark would likely be refused.

Distinctiveness can also be acquired through use and a show of evidence that consumers are readily able to identify the product or service. As you can see, distinctiveness is not just a complex concept, but it can also be difficult to prove.

It is because of the hurdles of non-functionality and distinctiveness that trying to trademark a scent can be such a difficult task. To make matters a little more difficult, you must also provide a description of the mark in the trademark application. Descriptions of scents are difficult in that not only are scents subjective, but putting words to smells can sometimes be difficult as well.

Keep in mind however that these obstacles for scent trademarks are specific to the United States. In Europe, it is a much different story for olfactory trademarks. The Office for Harmonization in the Internal Market is the governing body in the European Union. There, the issue is not functionality, but rather that the trademark needs to be “represented graphically” and be “capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

The biggest hurdle with obtaining a scent trademark in the EU is the “represented graphically” part. One court has held that if the mark can be graphically represented “by means of images, lines or characters” in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” way, the sign may be eligible for registration. Ralf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00, [2002] ECR I-11737 (ECJ Dec. 12, 2002)).

Beyond the United States and the EU, the status of scent trademarks vary from country to country and before attempting to trademark a smell, it is best to consult an intellectual property attorney.

For more information on scent trademarks or for assistance with your trademark, contact Biletsky Law.

5 Things You Need to Know About TRADEMARKS

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Trademark

 

 

Trademarks are everywhere around you, in fact by just looking around you right now, you are bound to see at least a couple of recognizable brands. To give you a better understanding of trademark law, here is a short list of five things you need to know about trademarks.

 

 

  1.      You may already have one

The “trademark” that comes to mind when most people think about trademarks are the brands with the “®” symbol and the brands that usually have federal trademark protection. But just because you haven’t registered your brand or mark doesn’t mean you don’t have trademark protection.

The ® that you see comes from trademarks that are federally protected and are registered with the United States Patent and Trademark Office. But without registering, you may still have trademark protection! If your trademark is not registered, the trademark that you may have is called a “common law trademark.” Instead of having your brand protected across the whole country, it is only protected in the particular area that it is being used in. For instance, selling your brand of chocolate bars in California may give you common law trademark protection in the state of California. If someone sells a chocolate bar with the same name in a different state, there is likely no trademark infringement. Whether you have a common law trademark will depend on the area you are using your brand in.

  1.      There’s more to Trademark than meets the eye

Federal trademark protection comes from a law called the Lanham Act. The Lanham Act does not just provide protection to your trademarks but also to service marks, trade dress, and to websites. Recently, trademark disputes involving websites have become a larger focus in the area of law.

The Lanham Act has entire sections dedicated to online protections against infringing activities such as cybersquatting. The law against cybersquatting is meant to prevent someone from using your trademarked domain name without your permission. Other harmful acts that the Lanham Act seeks to prevent are activities that tarnish or dilute a trademark. Whether an activity has resulted in the tarnishment or dilution of a trademark depends upon many factors dealing with the activity as well as the mark or brand itself.

Trademark

  1.   You can trademark smells…

And colors, sounds, shapes, slogans, and almost anything else that can be associated with a mark or brand. Trademark protection goes even further to protect things like trade dress and product packaging. Think about the setup of your local fast food restaurant or electronic store. If you go into different McDonalds or Radioshacks, you will probably notice that each store has a similar décor or atmosphere to the other stores. That goes to the “trade dress” of the particular brand. Thinking about the different smells of perfumes or the sound of the roar of the lion in the beginning of MGM films makes you realize why more than just a logo can be trademarked.

  1.      “Fair use” may not seem so fair

You may have heard of the words “fair use” in other contexts, in particular copyright law. Fair use can be a defense to trademark infringement. However, the fair use defense in trademark law is more restrictive than fair use is in other areas of law. There are 2 versions of fair use that are commonly used in defending against a trademark infringement lawsuit.

The first is set out in the actual law itself and is sometimes called “Statutory Fair Use.” This gives a defense to trademark infringement where the brand describes something, or is “descriptive.” If you were to use the words “beach boys” to describe boys on the beach, then statutory fair use would act as a defense to the trademark infringement.

The second is referred to as nominative fair use. Nominative fair use comes from using a trademark because there’s no other way to mention it. For example, if you were to mention Tide detergent in a newspaper article while you were referring to Tide detergent. That would be nominative fair use since there is no other way to mention Tide. Whether an activity counts as “fair use” under either of these defenses depends on the activity itself.

  1.     You need to stop it, before it stops you

Trademark infringement is a serious matter and can cause a great amount of damage to a company, its’ brand, and image. Just think about what would happen if everyone was able to sell “Coca Cola” flavored soda. People who bought Coca Cola would never know what to expect and that is precisely one of the goals that trademark law is trying to achieve, to prevent consumer confusion. So be smart about your brand or product. Think about whether you need to register it and also be sure to keep an eye out for unauthorized uses of your brand.