Scents have the ability to conjure up images and trigger memories in a person’s mind. For example, the smell of fresh-cut grass may induce a person to think of springtime, or the smell of salty air may trigger thoughts of the beach. It follows that under certain circumstances a scent may cause a consumer to associate a particular product with a single commercial source. As such, scents are capable of functioning as source identifiers. The difficulty, as with other nontraditional marks, is capturing the point at which a scent functions as a trademark. In other words, when does a scent reach the threshold of nonfunctionality and distinctiveness that enables it to be protected as a trademark? More important, what evidence must an applicant offer to prove that a scent is nonfunctional and distinctive? As discussed below, the United States can provide some, albeit limited, guidance to applicants for such marks, and to other jurisdictions heading down the path of scent mark protection.
History of Scent Mark Registration in the United States
The first U.S. scent mark registration was issued in 1990 after an appeal before the U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB). See In re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990). The mark was for a “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used in connection with “sewing thread and embroidery yarn.” U.S. Reg. No. 1,639,128. Under the circumstances of the case, the TTAB could find no reason why the applicant’s scent was not capable of functioning as a trademark for the applicant’s goods. 17 USPQ2d at 1239. The TTAB noted that (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. Id. at 1239-40. After reversing the refusal to register, the TTAB jokingly stated that the certificate of registration would not be “scratch and sniff.” Id. at 1240 n.6.
Since the Clarke decision there have not been a large number of scent mark applications filed with the USPTO, so there remains little guidance for future applicants in this area. However, one thing is clear—registering a scent mark on the Principal Register of the USPTO is difficult, at best, and the USPTO acknowledges the same: “The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” See U.S. Trademark Manual of Examining Procedure (TMEP) §1202.13. In the 18 years since the Clarke decision, only one scent mark has been registered on the Principal Register. That registration was for a cherry scent for “synthetic lubricants for high performance racing and recreational vehicles” (U.S. Reg. No. 2,463,044). Eleven scent marks are registered on the Supplemental Register, which is a secondary register generally reserved for marks that are capable of distinguishing an applicant’s goods or services, but that have not yet acquired the requisite distinctiveness.
U.S. Requirements for Scent Mark Registration
In order to overcome the “substantial” threshold of registering a scent mark on the Principal Register, an applicant must negotiate two primary obstacles: (1) proving nonfunctionality and (2) proving distinctiveness. Each is briefly discussed below.
A product feature is functional if it is “essential to the use or purpose of the article or if it affects the cost or quality of the article.” Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995) (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10 (1982)). The need for competitors to copy a particular product feature is a significant consideration in determining whether a product feature is functional; however, it is not determinative. Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002). If a product feature is functional, it cannot be protected as a trademark, even with proof of secondary meaning. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001). The functionality doctrine seeks to prevent trademark law from inhibiting competition by allowing a trademark owner to control a useful product feature.
Therefore, if an applicant can show that the scent acts as a source identifier without performing any other significant function, the scent will likely pass the nonfunctionality test. For example, in Clarke, the applicant successfully argued that its Plumeria blossoms scent was an arbitrary feature of the yarns and threads that it produced, and did not present a significant obstacle to competitors as they could adopt other scents for their yarns and threads. 17 USPQ2d at 1239. If, however, the scent serves a utilitarian purpose, the scent will fail the nonfunctionality test. See TMEP §1202.02(a). Accordingly, the TTAB in Clarke stated that scent registration is not permitted for products “noted for those features, such as perfumes, colognes or scented household products.” Clarke, 17 USPQ2d at 1240, fn. 4; see also TMEP §1202.13.
A nonfunctional scent mark, like product trade dress, may be registered on the Principal Register, but only with proof of acquired distinctiveness. TMEP §1202.13. As mentioned above, the amount of evidence needed to establish acquired distinctiveness of a scent mark is substantial. See TMEP §1202(b)(i). For example, in an application to register a grape scent in connection with lubricants and internal combustion engines, the applicant submitted a declaration that it had (1) used the grape scent for at least five years prior to the filing date of the application; (2) annually sold at least 5,000 bottles of lubricants containing the grape sent during those five years; and (3) advertised the product in numerous catalogues, in sales literature and on the applicant’s website. See U.S. Serial No. 77/179,347. However, the examiner found the applicant’s evidence insufficient to support its claim of acquired distinctiveness. Specifically, the examiner noted that the scent mark had been in use for less than 10 years, the volume of sales was relatively low over the five-year period that it was in use, and the applicant failed to submit specific figures regarding its advertising expenditures. Id. The application was subsequently deemed abandoned for failure to respond to the Office Action.
If an applicant is unable to demonstrate that a scent has acquired distinctiveness, the scent can be registered only on the Supplemental Register. TMEP §1202.13. Thus, a number of applicants have amended their applications for registration on the Principal Register to applications for registration on the Supplemental Register after encountering an acquired distinctiveness refusal. (See U.S. Reg. No. 3,140,701 for an apple cider scent, Reg. No. 3,140,700 for a peppermint scent, Reg. No. 3,143,735 for a vanilla scent, Reg. No. 3,140,694 for a peach scent, Reg. No. 3,140,693 for a lavender scent and Reg. No. 3,140,692 for a grapefruit scent, all in connection with office supplies.) After a scent mark has existed for five or more years on the Supplemental Register and additional evidence of acquired distinctiveness has been obtained, the registrant may file a new application for registration of its mark on the Principal Register.
The Future of Scent Mark Registration in the United States
As discussed above, an applicant seeking a U.S. registration for its scent mark faces the heavy burden of proving that (1) the scent serves a nonfunctional purpose and (2) the scent has acquired distinctiveness. The difficulty in registering a scent mark on the Principal Register appears to have deterred applicants from filing scent mark applications in the United States. The upside of this is that brand owners still have the opportunity to be trailblazers in the area of scent marks. The downside is that until more scent mark applications are filed to establish a better framework for considering how to satisfy the nonfunctionality and distinctiveness requirements, scent mark applicants should be prepared for an uphill battle.
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