When we hear the term trademark, we associate it with visual symbols like slogans, logos, colours, and even sounds. However, have you ever considered that this list can also include ‘scent’ i.e., you can also trademark a scent? While it may sound absurd, this is correct. In certain jurisdictions, the intellectual property law allows for trademarking scents. But keep in mind that this is a complex process. In this blog, we will learn the requirements of USPTO to register a brand’s unique scent.
Understanding Scent Trademarks
The purpose of trademark law is to provide legal protection to brands’ indicators. This helps consumers in two ways. One, it provides convenience to consumers as they can identify the source of goods or services just by looking at the trademark. Two, trademarks assure consumers of consistency and level of quality. In this way, a brand owner is also encouraged to uphold the brand’s identity by providing the best products or services at reasonable costs across the board.
Having said that, let’s consider scent within the context of IP law. Scents are trademarked for the same reason as logos or slogans are done, to identify the source. A famous example of this is Hasbro’s Play-Doh. The USPTO granted Hasbro federal registration for its Play-Doh scent due to the unique association of the scent with the brand’s play dough and for evoking nostalgic childhood memories for the consumers. The trademark registration described the scent as a “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough”. Similarly, Verizon has done the same. It also has registration for the “flowery musk” fragrance it sprinkles in its stores. The scent forms part of Verizon’s trade dress and is an indicator for the consumers that they are in a Verizon store.
The requirement of Functionality and Distinctiveness
Trademarking a scent sounds like a creative idea for protecting and promoting your brand however the process is not as straightforward as trademarking a logo or symbol. Not every brand can acquire registration for scent marks. Many scents usually fail in the requirements of functionality and distinctiveness.
The functionality doctrine requires that something is purposeful or is essential for serving a purpose. This can be seen from patents where the inventions and creations are supposed to be purposeful to acquire the license. This is the opposite of trademark law. Trademarks are solely associated with your brand and are meant to identify the source. If an item or a mark has practical use i.e., it is functional, then it cannot be trademarked. Hence, you will never see brands trademarking their perfumes as the said items are a functional product of their business. Trademarking a scent is difficult precisely because you need to show that the scent is non-functional i.e., the sole purpose of the smell is to associate the smell with your brand and is not part of your products or services.
The second aspect where a scent fails to get registered under the trademark law is distinctiveness. To prove distinctiveness, you need to present enough evidence to establish the acquired distinctiveness of the mark, which includes proving continuous use over a considerable period, advertising and marketing, annual sales, etc. Therefore, most of the scents are unable to get registered in the Principal Register – which is a requirement for acquiring IP protection from USPTO – and are demoted to the Supplemental Register because they cannot successfully establish distinctiveness. The disadvantage of being on the Supplemental Register is that you will not have the presumption of ownership for your scent mark and in the event of an infringement dispute, you will have to prove the validity of your scent mark like any other unregistered mark.
Conclusion
Scents cannot be easily trademarked however this does not imply that you should not try to do so for your brand. By crafting a signature scent which has the sole purpose of representing your brand, you can easily acquire trademark protection for it. To make the process easier and simpler, you can hire the services of a professional attorney who can navigate the complexities of trademarking a scent and provide you with the desired protection from the law. At Drishti Law, you can book a free consultation today with our experienced principal attorney who can assist you in this regard.
Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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