Can you trademark a smell in the United States?

Can you trademark a smell in the United States?

Traditionally a trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the products of one company from products of other companies.  Using a trademark in commerce is the key to establishing trademark rights.  A trademark does not have to be registered with the United States Patent and Trademark Office, but registering the trademark grants the trademark owner additional rights.

Traditionally trademark law focused on visual trademarks, things that can be seen with the eye.  Nontraditional trademarks like scents or smells can also be protected by trademark law and registered as trademarks, if the trademark smell meets the other factors necessary to qualify for registration with the United States Patent and Trademark Office.

The goal of most companies that use trademarks is to register their trademarks with United States Patent and Trademark Office and trademark law in the Untied States involving unregistered trademarks can vary greatly from state to state.  For the sake of simplicity this article will focus on registering a smell as a trademark, but the reader should keep in mind that just because a trademark is not registered does not mean the trademark is not granted some protection.

A company that wants to register a smell as a trademark must prove that (1) the smell serves a nonfunctional purpose and (2) the smell has acquired distinctiveness.

The primary obstacle that must be overcome when registering a trademark smell is that trademark law does not protect functional aspects of a product.  If a product, because of its composition, naturally emits a smell, then that smell may not be granted trademark protection.  The natural odor of food could not be trademarked by a food manufacturer, because the smell of the food is a function of the ingredients of the product and does not identify who made the food.  Smells that serve a utilitarian purpose, such as the scent of perfume or an air freshener, are functional and cannot be registered.

If the smell is not considered functional then the next test is whether the trademark smell has acquired distinctiveness.  Acquired distinctiveness means that consumers identify the trademark with the producer of the product.   The thoughts that the trademark bring to the mind of consumers is the key to demonstrating acquired distinctiveness.  If consumers do not associate a trademark smell with products from the company using the trademark smell then the trademark smell does not have acquired distinctiveness.  The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.  Merely using a trademark smell for a number of years and selling products with the trademark smell is not enough.  Things that would help show that a trademark smell has acquired distinctiveness would be, advertising material which highlights the trademark smell as a source identifier and declarations from consumers stating that they associate the trademark smell with products from the company.  Exclusive use of the trademark smell is also evidence of acquired distinctiveness.   If competitors are using the same smell in their products that would be evidence against acquired distinctiveness.

If an applicant for a trademark cannot demonstrate acquired distinctiveness to the United States Patent and Trademark Office, the trademark smell will not be eligible for registration on the principal trademark register, but may still be eligible for registration on the supplemental trademark register.  Later when acquired distinctiveness can be demonstrated the trademark smell could be transferred.

Two cases that are worth reviewing about trademark smells are:

In re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990) – in this case a trademark smell for yarns and thread was allowed to be registered because:  (1) the applicant was the only person marketing threads and yarns with a scent, (2) the scent was a feature added by the applicant and not inherent or natural to the goods, (3) the applicant advertised and promoted the scented feature and (4) the applicant demonstrated that purchasers had come to recognize the applicant as the source of the scented goods.

Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844 (1982) – in this case a trademark smell for medicine was refused because: (1) competitors were using the same smell, (2) there was some evidence that the smell had a function in the medicine, (3) there was no evidence of advertising which noted the smell, and (4) the consumer declarations were form letters and not individual statements from consumers.

Trademarks in general are complex topics.  Nontraditional trademarks like trademark smells are even more complex.  It is best to consult with an experienced trademark attorney if you have questions about registering a trademark smell.

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