A few weeks ago, Play-Doh made headlines for the comic description of its signature scent that accompanied its trademark filing. Many people don't understand how difficult it is to trademark a scent or how much work goes into the filing process. Not to mention, only about a dozen brands have trademarked a scent successfully.
As the USPTO considers Play-Doh case, Inside Counsel sat down with Ronda Majure, vice president, CompuMark, to discuss what it takes to actually trademark a scent. Not many people or companies have tried to trademark a scent, and therefore do not understand the difficulty in proving the uniqueness of the scent and how subjective that standard can be. Describing the scent in such a way that it is distinguishable in one form or the other can be one obstacle.
“The biggest challenge for registering scents is that they can be subjective and therefore very difficult to register,” said Majure. “Perception of smell can be a very individual human experience. Sometimes the smell can even cause a negative or unpleasant reaction.”
Some countries such as Brazil, China and Mexico explicitly prohibit scent mark registration, According to Majure. In fact, the EU takes a wider view, where geography plays a role in protecting the brand. One can debate if a scent can be aligned with a geographical location.
“What is certain is that scents can be trademark this is a growing area for trademark attorneys that represent marks with uniquely memorable scents that can be used to promote and sell a product,” she said.
An excerpt from the article “The Sweet Smell of a Successful Registration” states, “The Lanham Act uses the broadest possible terms to describe the range of items that can qualify as trademarks. Although scent marks are not specifically enumerated in the Lanham Act, U.S. law recognizes that scent can function as a source identifier where it has no utilitarian function. Absent evidence that a scent mark has attained secondary meaning (an expensive feature both to establish and ultimately to prove), the Trademark Manual of Examining Procedure provides that scent marks are registrable on the Principal Register under Section 2(f) or on the Supplemental Register. The amount of evidence required to establish that a scent functions as a mark is substantial.”
To date, the scent marks accepted for registration in the U.S. have been limited to scents identifiable to most the public through personal experience. In fact, the USPTO has issued registrations for five olfactory marks and has passed several additional applications to publication. According to Majure, in each case, the applied-for scents have consisted of a commonplace unadulterated scent immediately intelligible to most the public detailed in a straightforward written description. Following the Qualitex decision, no scent mark has graduated to registration on the Principal Register.
The Advocate General's decision identifies one of the most limiting aspects of current protection for olfactory marks. All marks must be capable of clear graphic representation to allow for accurate searching and clearance by the trademark office, by third party trademark owners, and, by the courts. Other non-traditional marks like color and sound have developed and accepted systems for identification. Color marks are referenced by an accepted color code such as the Pantone Matching System, and sound marks are represented by musical notations. So, no such identification system has yet been introduced for the identification of scents.
“Despite the widely recognized effectiveness of sensory marketing techniques, the interest in olfactory marks has thus far been surprisingly slow to develop,” explained Majure. “The difficulty and expense associated with establishing secondary meaning for registration purposes is likely partly to blame for the relative dearth of olfactory applications pending before the USPTO. As manufacturers and marketers strain for new ways to distinguish their products and message from competitors, scent marks present a potentially effective new method of reaching the consumer.”
From a SAEGIS search, there are 12 active scent trademarks. The majority are registered on the Supplemental Register, which is the secondary register of trademarks maintained by the USPTO. In the U.S., the first scent mark was in Dec. 2010 – and only a few scent marks have been registered since that period.
So, what does it take to successfully trademark a scent? According to an excerpt from an INTA Bulletin, “Scent marks are more problematic than visual trademarks as they are defined subjectively and are therefore open to interpretation. The complications that arise from human perceptions of odors lead to the argument that subjective views are inadequate when determining whether the scent mark functions as a trademark. In relation to a successful registration, scent marks are arguably one of the most difficult types to represent graphically.”
“In the U.S., scent marks are registrable if the word, name, symbol, or device, or any combination thereof is used in trade to identify and distinguish goods or services and to indicate source,” explained Majure. “The requirements for registering a mark consisting solely of a scent or sound no longer mandate an accompanying drawing. Instead, a detailed written description of the non-visual mark must be provided.”
In 1990, the Trademark Trial and Appeal Board held that a scent reminiscent of Plumeria blossoms could be registered for “sewing thread and embroidery yarn.” This scent mark had acquired distinctiveness through use, and led to the USPTO accepting that scents can function as trademarks.
In Clarke, the issue of whether a scent mark is distinctive because it is unique in nature or unique to the market was addressed; the USPTO’s standard is that the amount of evidence required to establish that a scent functions as a mark is substantial. Where the mark is not functional but has yet to acquire the requisite distinctiveness, the mark will be registered only on the Supplemental Register.