Can You Trademark a Smell or a Scent?

Though not as common when compared to traditional trademarks, e.g., logos, symbols, words, and designs, you can register a trademark for a unique scent or smell that is associated with your goods or services. Businesses have moved beyond traditional trademarks in embodying and reinforcing their brands. 

According to the World Intellectual Property Organization (WIPO), smell is considered one of the most potent types of human memory. So, by tapping into this human sense, brands can create an emotional connection with consumers. Thus, the trademarking of scents is a subtle move by businesses to transform customer interaction with their goods and services into an experience. For example, the scent of freshly cut grass on tennis balls could lure consumers into favoring the product. 

However, taking a step back - while scents can contribute to a brand's identity or give it a competitive edge in the marketplace, how far can businesses go in trademarking such innovations? 

The requirements for a scent to qualify for registration

You can secure rights to a unique scent by registering with the United States Patents and Trademarks Office (USPTO). However, to qualify for a trademark, the smell must be something that a consumer associates with your particular product or service, separating your brand from competitors in the marketplace. 

1. Distinctiveness

This is the most difficult hurdle for businesses seeking to trademark scents. Before applying for registration, you must ascertain that your scent mark is unique and serves to identify the source of your goods and services. It shouldn't be just a pleasant fragrance.

You can prove acquired distinctiveness by submitting evidence of continued use of the scent mark over a long period of time. You can also provide records of annual sales and marketing and advertising expenditures. Marks that satisfy this criterion are filed with the USPTO's Principal Register. Those that fail to demonstrate acquired distinctiveness are amended to the Supplemental Register. 

A mark on the Supplemental Register doesn't enjoy the presumption of ownership like a valid and enforceable trademark on the Principal Register. Although the mark is on file with the USPTO, you'll still be required to prove validity and ownership in the event of an intellectual property (IP) infringement dispute.

The benefits of being on the supplemental register include:

• The trademark owner still gets to use the ® designation.
• The mark is on file with the USPTO, therefore preventing others from registering a similar mark.

2. The scent must be non-functional

To qualify for registration, your smell must not be essential to the function of a product or service. Trademarks solely identify the source of your goods and services. Therefore, it's unlikely for perfume companies to trademark their fragrances because the scent serves as their functional purpose and actual product.

To trademark a smell, you must be able to demonstrate that it's non-functional. Prove that the scent is a mere cause of association between the consumer public and your goods and services. Take, for example, United Airlines' "Landing" fragrance. It has no utilitarian relation with the actual services offered by United Airlines.

3. Representable

How does one represent a scent visually? Applicants of scent trademarks aren't required to submit a drawing or graphical representation of the mark. This is as long as they submit a detailed written description of the invisible mark. 

When writing down the chemical composition of a smell, you must be so precise that it cannot be confused with other scents.

Challenges of trademarking a smell

While trademarking smells sounds like a genius idea for protecting brand identity, it's extremely difficult to obtain federal registration. This is due to the strict criteria for registering scent marks, among other factors.

Some of these challenges encountered when registering a scent mark include:

1. Describing the scent

Representing a smell in words accurately is challenging. Writing down a chemical formula for a scent is problematic because it may be deemed to represent the product rather than the smell of the product.

2. Subjectivity

Proving the distinctiveness of a smell is problematic since scents are subjective. Humans perceive scents differently and, in some cases, may fail to recognize the smells of common items. This raises the question of how exactly scents identify the source of a product and which scent exactly is being protected.

3. Functionality

Some smells may be considered functional and, therefore, not eligible for trademarking. For example, perfume and fragrance companies cannot trademark scents since the smells are the actual product.

4. International protection

Scent trademark registration isn't well defined in international treaties. In fact, the International Trademark Law Treaty doesn't apply to scent marks. As of now, there is no generally accepted international classification of smells. This makes it impossible to identify a scent objectively and precisely through the attribution of a name or a precise code specific to each smell.

5. Scent depletion theory

There's an endless supply of smells globally. While good scents are universal and predictable, only a select class of odors would make it for consideration in association with a brand. For instance, players in the household and personal care products market have a clear customer inclination toward certain scent profiles. For example, consumers prefer "fresh" scents for laundry detergents and "soft" scents for tissue paper. 

Therefore, the registration of scents in certain markets could restrain competition on non-source-related lines. The essence of trademarks is to identify the source of goods or services. If a scent infringement suit happens in the US, a scent depletion argument might stop the registration of a scent mark.

6. Inconsistent judicial administration

The unclear nature of scents and how people perceive them can lead to inconsistent court decisions in infringement cases. There has yet to be a case of scent infringement in the United States. Thus, there is no standard on how judicial action would be administered in the matter. 

The scent is subjective in nature. 

Environmental and personal factors can affect how we perceive scents. People often struggle to identify common smells. Basically, a case before a jury would go down to a game of chance. There is a likelihood of confusion in the analysis of scents.

The uncertainty of how a scent infringement case would play its part in unfairly restricting competition. This can make competitors extremely careful in avoiding certain scents.

Pros of trademarking smells

As the competition in marketplaces intensifies by the day, businesses are moving to secure an edge in branding and marketing by tapping into non-traditional trademarks. Smells can arouse emotion and nostalgia. Therefore, trademarking scents provides an avenue for businesses to leverage consumer emotions and nostalgia into their branding. 

Some of the benefits of trademarking smells include:

• Brand recognition: A unique smell can create a strong emotional bond between your products and consumers.
• Competitive advantage: Trademarking your scent helps customers tell your products apart from competitors.
• Protection: This can help prevent third parties from copying your product and misleading consumers.
• Monetary damages: In the event of infringement and a subsequent ruling in your favor, you could receive monetary remedies. This includes including infringer profits, damages, and other costs such as attorney fees.

Enforcing a scent trademark

To date, no scent infringement case has been brought before a federal court. This lack of precedent leaves practitioners uncertain about how such a case would be handled. Despite this, trademarks play a crucial role in protecting brand identity and preventing consumer confusion.

The absence of a judicial framework for enforcing scent trademarks raises many questions. 

Should a jury determine whether one scent mimics another? If jurors can't rely on their sense of smell, should experts provide testimony? How should scents be presented as evidence or preserved for appeal? These uncertainties leave legal practitioners in a challenging position.

Despite the challenges, it's essential to actively monitor the market for competing products. Conducting searches and setting alerts for new registrations on the USPTO can significantly aid in enforcing your trademark.

Given the legal uncertainties surrounding scent trademarks, working with a trademark attorney throughout the process is highly recommended. And you can do so today with Trademarkia. Start the process, secure your unique identifiers, and stand out in a crowded marketplace. 

Examples of trademarked scents

1. Verizon Stores: Verizon, which sells mobile phones and operates retail spaces, has the "flowery musk scent" trademarked for all their stores.  
2. Play-Doh: Toy modeling compound company, Play-Doh trademarked the distinctive smell of its product. The scent, according to the USPTO, is described as a "sweet, slightly musky vanilla fragrance with slight overtones of cherry, combined with the smell of a salted, wheat-based dough." Play-Doh's scent has been in operation since 1955, but the registration was filed by Hasbro on February 14, 2017. The registration was granted on May 15, 2018.
3. Natural fiber welding: Owns a woodsy scent for their plant-based fabrics and leathers.
4. Pure Polish: The orange fragrance used to scent their shoe polish is owned by Andrew Vaughn.

Additional resources

• How to Choose a Good Trademark (Understanding Trademark Strength)
• A Guide to Trademark Registration on the Principal and Supplemental Registers
• Understanding Trademark Distinctiveness and Its Importance

Glossary of legal terms

• Trademark: A symbol, design, word, phrase, or combination of these used to identify the source or goods or services.
• Trademark infringement: The unauthorized use of a trademark owned by another person or business.
• Intellectual property (IP): This typically refers to creations of the mind. This may include trademarks, patents, copyrights, industrial designs, and trade secrets.