The Hurdles to Register a Scent as a Mark

Registrations of non-traditional trademarks are uncommon, and often discussed only among legal scholars and in academic papers. A recent Wall Street Journal article, however, called attention to a growing trend in trademark law: registration of scents and fragrances. The article describes the efforts of CESI Chemical, Inc., a producer of solvents for the fracking industry, which filed an application to register the orange scent imbued in its chemical additives for its hydraulic fracturing fluid.

Although only a small number of registrations for scents exist in the United States, applications are on the rise. Examples include yarn fragranced with plumeria flowers, piña colada scented ukuleles, flowery musked mobile phone outlets, and flip flops that smell like bubble gum. While non-traditional trademarks can be a creative way to differentiate a brand, they face increased scrutiny during the registration process. The United States Supreme Court has interpreted the potential realm of trademark broadly: “Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995). However, at a minimum, a trademark must “act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Id. at 166. Thus, the Trademark Act does not preclude registration of a scent or other non-traditional marks such as sound, color, shape, taste, texture, and motion.

The first challenge to register a scent is to show that it is sufficiently distinctive to indicate the product’s source to a consumer. This is not a challenge for a t-shirt branded with the word, “Nike”: consumers readily recognize that the word communicates the shirt’s manufacturer. However, unlike a distinctive word or phrase, a scent does not inherently indicate to a customer who made the product. Therefore, an applicant will need to establish that the proposed scent has acquired distinctiveness over time through the applicant’s efforts. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995) (a product feature has developed distinctiveness when consumers recognize that the feature has a secondary meaning which identifies the product’s source).

To demonstrate acquired distinctiveness, an applicant can present (1) evidence of advertising that promotes the scent as a trademark, (2) the amount of money spent on such advertising, and (3) statements by consumers that the scent indicates to them the product’s source. See 37 C.F.R. § 2.41(a); see also In re, 415 F.3d 1293, 1300 (Fed. Cir. 2005) (“In determining whether secondary meaning has been acquired, the Board may examine copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies [linking the name to a source].”).

For example, in its application before the United States Patent and Trademark Office (“USPTO”), CESI argued that it has used its orange scent exclusively for approximately ten years, while competitors have used no scents of any kind. CESI also points to its branding efforts, including the publication of its orange tree logo and a trade journal cover showing its parent company’s CEO holding oranges. Finally, CESI has stated that customers in the fracking industry associate the scent with its company.

Further, to be registrable, scents must not be used in a functional manner. A recent decision by the TTAB shows how the functionality doctrine can be applied to bar a scent mark. In the case of In re Pohl-Boskamp GmbH & Co. KG, 106 U.S.P.Q.2d 10425 (TTAB 2013), the applicant sought marks for both the flavor and scent of peppermint in connection with its Nitrolingual Pumpspray formulations of nitroglycerin – a spray applied under the tongue to treat chest pain from coronary artery disease. Conducting a functional analysis, the examining attorney looked to a third-party patent which stated that menthol-containing substances – such as peppermint oil – potentiate the efficacy of sublingual nitroglycerin, including Nitrolingual Pumpspray. The TTAB upheld the refusal of registration.

In the matter of CESI’s application the Trademark Office expressed concerns that the orange scent of Flotek’s chemical additives serves a functional purpose in the hydraulic fracturing industry, perhaps allowing CESI’s fracking solution to be traced by smell and determine liability in the event of contaminated drinking water. CESI has responded to these concerns by declaring that the orange scent does not function as a tracer, to mask an odor, or to indicate flammability. CESI also argued that there are no utility patents where scent “is described in the specification or recited as a claimed element for the identified goods.” Finally, many other scents are available to CESI’s competitors.

It is unclear if CESI will be able to join a handful of owners of registered scent marks. The obstacles on its path show that registration of a scent faces heightened scrutiny and involves many layers of agency action and informational correspondence. Applicants wishing to catch the attention of a consumer’s nose through a branded scent must be prepared to provide convincing evidence, not only of continuous exclusive use, but also of (1) its commercial efforts to establish the scent as a source indicator and (2) that the scent acts only to differentiate the product in the marketplace, and will not prevent competitors from making functional innovations.

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