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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.

Trademark Classes

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Biletsky Law - Trademark ClassificationA common misperception about trademark law is that once you have registered a trademark, that you own all of the rights to the name, logo, or brand (these are referred to as the “mark”). In reality, this is not necessarily the case. When registering a trademark, one of the essential steps is choosing which class best fits your product or service. Once the trademark application survives the examination process, you will then receive the trademark rights to your mark in the particular class that you selected.

For example, Coca-Cola may have originally registered their mark as a beverage (Perhaps under Class 032 – Beers and Beverages). At that point, someone who sold couches and other furniture (Class 020 – Furniture) under the name Coca-Cola would likely have been permitted to use the name Coca-Cola because there isn’t a high likelihood of confusion amongst consumers. A likelihood of confusion is the standard for trademark infringment, but that’s a whole other topic for another article!

Nowadays, because of the massive branding around Coca-Cola, and the possibility of the company having registered their mark under a multitude of different classes, the opportunities for other people to come up and use the name in a different product or service is diminishing.

Before getting back to what the different classes mean, here is a little history on the classification system. In 1957, the Nice Agreement, or the “Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks” established a set of classifications to be used as the basis of registering trademarks.

One of the underlying purposes for establishing this class system was to set up a uniform method for making it easier for trademarks to be classified appropriately regardless of the country of origin of the mark. As of now, the Nice Classification had been adopted by 84 different countries and contains over 11,000 detailed descriptions of different products and services.

Now that you have a basic understanding of what classes are, and where they came from, we can dive into what this all means for you. The classes are divided into two major subsects, Products and Services. There are 34 product classes and 11 service class. Each of these classes are further divided into descriptions. For instance if you are selling camoflauge t-shirts the class would be 025 – Clothing and the description would be “Camoflauge T-shirt.”

Each class has a separate filing fee which ranges between $225 and $375. However, descriptions within each class can be added at no additional fee. So, going off the t-shirt example, if you are also selling dress shirts and sweat shirts, there is no additional fee to include those descriptions in your trademark application.

So, if you have enough money to be able to register your trademark under each class, you’ll be able to have the trademark rights to your mark for pretty much everything, right? Well, not exactly. Trademarks are based upon the use of the mark in commerce. However there are many situations where you may wish to obtain the trademark rights to a product or service but you may not be using the mark in those service quite yet.

That’s where the “Intent to Use” basis comes in. What this means is that you are not currently using the trademark for that product or service, but you intend to do so. However, you cannot just state that you intend to use the mark for every product or service, rather you need to have a bonafide intent to do so. The trademark application even requires you to state that you intend to use that particular class, under penalty of perjury. This means that lying about whether you had the intent to use the product or class can come with serious consequences.

So that is a crash course about the classification system for trademarks. There are many other nuansces to the the trademark process and for the classification selection process. Before submitting a trademark application, it is important that you speak with an intellectual property attorney to help you choose which class is best for your product or service.

For more information on trademarks or the classification system, contact Biletsky Law.

Electric Daisy Carnival Trademark Battle

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Biletsky Law - EDCIn 2009, a trademark application for the mark “Electric Daisy Carnival” was filed on behalf of Pasquale Rotella of what is now Insomniac Holdings LLC. The trademark application alleged use as early as 1997. On April 20, 2015 Gary Richards of HARD Events filed a lawsuit seeking to cancel Insomniac’s trademark. Before diving into who owns what, it is important to understand where this lawsuit is coming from.

Starting as early as 1991, Gary Richards and Stephen Enos (also known as Dr. Kool-Aid) began hosting events under the name “Electric Daisy Carnival” in Southern California. It wasn’t until 1997 when Rotella began using the name for Insomniac’s flagship festival.

For nearly six years, Insomniac’s use of the “Electric Daisy Carnival” trademark went uncontested. Then, on June 5, 2013 Enos filed an Australian trademark application for “Electric Daisy Carnival.” After that trademark was filed, on June 21st, Insomniac filed an Australian trademark application for “Electric Daisy Carnival” as well. In addition to the filing, Insomniac also opposed Enos’ application. Taking the legal battle closer to home, some five years after the initial U.S trademark application for “Electric Daisy Carnival” was submitted, Enos filed suit in California against Insomniac claiming prior use of the mark.

While the outcome of the Australian trademark opposition and the U.S lawsuit is uncertain, Richard’s claim for ownership of the mark has thrown Insomniac back into the courts. Even though this lawsuit is likely to last for several months before any major developments occur, there is plenty of time to speculate what will happen.

Although Richards may not have federally registered the trademark, a person or a company receives “common law” trademark rights to the mark just by using the mark in commerce. However, unlike other intellectual property rights such as copyrights and patents, the user of a trademark only owns the rights to that mark so long as they are using the mark in commerce. What this means is that although Richards may have been the initial user of the mark, if Insomniac is able to show that Richards “abandoned” or failed to continuously use “Electric Daisy Carnival,” then Richards argument that he is the rightful owner to the mark will likely be met with rejection.

While the battle over the rights to the “Electric Daisy Carnival” wages on, Insomniac will continue to use the brand and has its’ flagship festival in Las Vegas lined up for next month with revenues expected to surpass the record-breaking receipts of previous years.

For more information about trademarks or to have a trademark of your own registered, contact Biletsky Law.

Cuba Trademarks

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Biletsky Law - CubaFor the last 50 years, Cuba has been an almost unreachable destination for U.S citizens. Sure, there were loop holes and ways to get there, but for the majority, Cuba was an off-limits territory. This all changed in December of 2014 when U.S President Obama declared the easing of the embargo that has placed restrictions between the U.S and Cuba. With this announcement came a whole slew of new issue involving U.S and Cuban relations including visitation, immigration, telecommunications, and of course business.

Now that the trade lines between the U.S and Cuba are starting to resurface, there is a new realization of the untapped market that lies just 90 miles from the Florida coast. Cuba, which is home to over 11 million people, has not been saturated by any U.S companies for the last half century and as businesses start to pour in, there are several vital issues to take into consideration. One such consideration is the protection of intellectual property and, in particular, trademarks.

Cuba is a “first to file” jurisdiction where the first individual or company to file a trademark will be entitled to the use of that trademark. This is in contrast to the U.S which has a “first in use” policy which makes it that whoever used the mark first is the one that is entitled to continue to use of the mark. Now that U.S companies are permitted to obtain Cuban trademarks, it is essential that companies evaluate whether steps need to be taken in order to protect their intellectual property.

So what does this mean? Well, it doesn’t necessarily mean that without action that your trademark will be taken, but if you are in an industry where there is some likelihood of a cross-over between markets, then it might be a good idea to secure your trademark.

As of now, there are two ways to secure your trademark in the Cuban territory. Which way is appropriate for you depends heavily on your circumstances and it is best to consult an attorney before taking either step. One way to secure your trademark is to register your pre-existing mark with the World Intellectual Property Organization (WIPO) under the Madrid Protocol Treaty. Another way to secure the trademark is to register the mark with the Oficina Cubana de la Propiedad Industrial (OCPI), which is the Cuban equivalent of the US Patent and Trademark Office (USPTO). The new developments in the U.S – Cuba relations also allow U.S companies to pay filing fees, obtaining Cuban registered agents, and to litigate to protect their intellectual property.

For more information on how to protect your intellectual property in the U.S and abroad, 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.