Although seldom seen in applications or registrations, a scent that identifies the source of a good or service may be eligible for protection as a trademark. Registration of a scent mark carries many of the same requirements that apply to a word mark or a design mark. The scent must be used in commerce.[i] Also, the scent cannot be functional.[ii] For at least this reason, the scent of a perfume, a candle or a food is likely ineligible for registration. One may also imagine an application for the scent of a restaurant being rejected if it is found to serve to entice potential customers. The scent of cleaning fluid may represent a grey area, as the fresh scent is not central to the function of the product, but serves an ancillary purpose in eliminating odors.
The requirements for registration on the Principal Register are a bit more stringent than for registration on the Supplemental Register. Registration on the Principal Register requires proof of acquired distinctiveness of the scent. This is no small burden. The proof may comprise, for example, affidavits from retailers recognizing the mark as a source identifier, proof of advertising expenditures, or proof of sales of goods in large numbers. If the scent is not proved to be distinctive, it may still be eligible for registration on the Supplemental Register.
As an additional requirement, a scent mark application requires that a sample or “specimen” containing the scent be mailed to the USPTO.[iii] Hasbro recently applied to register the smell of its Play-Doh product. Hasbro mailed a small container of the “toy modeling compound” to the USPTO to demonstrate what Hasbro describes as “a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” The application is currently in examination.
Currently, there are fewer than a dozen scent marks registered in the Principal Register and the Supplemental Register combined. Notable examples of registered scent marks include the following:
- Verizon’s “flowery musk scent” of their retail stores.
- Grendene footwear company’s bubblegum scent of their sandals.
- A rose scent for such promotional products as hand wipes, soaps, product packaging or advertising products.
- OSEWEZ’s (pronounced “Oh Sew Easy”) plumeria-scented embroidery thread.
A scent can carry significant value for a business. Neuroscience tells us that there is a correlation between smell and memory, as well as between smell and emotion. So if a business provides quality goods and consistently leaves customers satisfied, a smell associated with the business may elicit positive feelings or thoughts in consumers. A client whose goods or services are associated with a proprietary scent should strongly consider applying to protect their scent mark.
[i] 15 U.S.C. § 1051
[ii] TMEP 1202.13
[iii] TMEP 904.03(m)