Does That Smell Remind You of Something? Trademarking Scents

Scents, much like tastes, have the power to invoke certain thoughts and feelings in an individual’s mind. For example, the smell of popcorn can bring up thoughts of attending a baseball game or watching a movie in the theater. The smell of chocolate chip cookies can bring up wonderful memories of days spent at a grandmother’s house. The same cookie scent can also bring a brand name to mind, such as Nestle® Toll House®. Therefore, certain scents can cause consumers to associate a specific product with a single commercial source. That association is trademark. Scents are able to function as source identifiers, which means they have the possibility of becoming trademarks. However, as with the plethora of other nontraditional trademarks, scent trademarks have quite a bit of difficulty making it through the trademark process. This is mostly for two distinct reasons: functionality and distinctiveness. Said another way, in order to register a scent mark, the applicant must show (1) nonfunctionality and (2) distinctiveness.

Functionality

A product feature is deemed functional if it is essential to the use or purpose of the product. It is also deemed functional if it affects the cost or quality of the product. If a product feature is functional, it cannot be registered as a trademark and protected under trademark law. Many scents are functional in nature, such as the scent of perfume. If a perfume didn’t have a scent, it would no longer function as a perfume. Thus, the maker of a well-known perfume cannot trademark a signature scent due to the scent being functional to the product. With this doctrine, the Trademark Office aims to quickly block any move to corner the market by a trademark owner who wishes to control a useful product feature (whether it’s a scent or otherwise) and keep any competitors from having access to it.

Distinctiveness

In order to prove distinctiveness in a trademark, the owner needs to prove that the mark has been in use for many years, has had a large volume of sales behind it within the years it claims to have been in use, and has been advertised in numerous places with all types of media within the years it claims to have been in use. As you can see, it takes a lot of time and effort to prove such a thing and to gauge exactly how many years, sales, and advertisements are enough to satisfy the Trademark Office.

Despite all of this difficulty, a few scent trademarks do exist. A few examples of existing or past registered scent trademarks are plumeria scented yarn, piña colada scented ukuleles and the flowery smell of Verizon’s retail stores in Boston, Chicago, Houston and the Mall of America.

Scents are a trademark challenge. However, absent a trademark, there is no way to guard and protect the important fragrance.

write by morales