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Some scents are so distinct that you instantly recognize them. A smell can trigger memories, emotions, and have an impact on our moods. However, scent can also be a crucial marketing tool that can help to build a brand and increase consumer loyalty. For instance, consider the inimitable smell of Play-Dough or the “flowery musk” scent that permeates Verizon stores — these trademark scents are closely linked with each company’s branding. While it can be challenging to protect a unique scent with a trademark, trademark registering a scent can be done in certain instances.
Many companies seek to register their scents with the United States Patent and Trademark Office, but only a few will be able to do so successfully. Although a scent can be registered as a rademark, there are strict criteria that must be met. Importantly, to qualify for federal trademark protection, a scent must serve no functional purpose. A scent that is designed to freshen the air in a room or make you smell good is not registrable since it was intended to be used in a functional manner.
In other words, perfumes, colognes, herbal oils, air fresheners, room sprays, and cleaning products do not qualify for scent trademark protection since the smell is effectively the good itself. These products have the specific purpose of masking a scent or introducing one. However, things like cherry-scented lubricant for vehicle engines and a pina colada scent to coat ukuleles can be registered since these smells are not an inherent attribute of the product. Ironically, while the foregoing goods are afforded federal trademark protection for their scents, some of the most instantly identifiable designer fragrances — such as Chanel No. 5 — cannot be registered.
To successfully register a scent trademark, two hurdles must be overcome. In addition to showing that the scent is non-functional, a registrant must prove that it has acquired distinctiveness. A significant amount of evidence is required to establish that a scent is distinctive in order to register it as a trademark, including the following:
An applicant may submit documentation of sales in substantial dollar amounts, advertising evidence, brochures, and affidavits from retailers to demonstrate distinctiveness. If a mark does not have the acquired distinctiveness required to be on the principal register, the mark may still be placed on the supplemental register. Unlike the protections provided to marks on the principal register, there is no legal presumption of ownership on the federal level when a mark is on the supplemental register. But the owner would still be able to use the encircled “R” designation and prevent others from registering the same or a similar mark.
Trademark registration of a scent is challenging, but not impossible. Nevertheless, due to the difficulties an applicant will face, only a small number of trademarks have been issued by the USPTO for smells. The first federal scent trademark was granted in 1990 for a plumeria blossom-scented embroidery thread. After the door was opened to allow for the trademark registration of smells, various other scent trademarks have since been registered.
Some scent trademark examples that have been registered with the USPTO include the following:
In the above scent trademark examples, the smell is not the essential point of the product — thus, it can be protected with a trademark registration. Notably, while the composition of a fragrance or perfume can be patented, the scent itself does not qualify for protection. It’s crucial to understand how to safeguard your intellectual property and develop a comprehensive strategy for doing so.
Even if the smell for which you’re seeking protection has a functional use that disqualifies it from being registered as a scent trademark, there are still other ways you may be able to shield your brand from competitors. Some of the most common trademarks registered are for logos, symbols, company names, and slogans. Taking the measures to register these aspects of your scent brand with the USPTO can help to ensure your company’s reputation and bottom line are safeguarded from competitors who seek to make a profit from its goodwill.
You may also be able to protect the appearance of your product with trade dress registration. As with trademarks, trade dress must be non-functional and distinctive. It only applies to the packaging of a product, the configuration of the packaging, and any visual aspects of the product used for promotional purposes.
Whether you’re seeking to register a trademark scent, slogan, design, or logo that represents your brand, it’s essential to have a skillful trademark lawyer by your side to help ensure your registration is successful the first time you file. Located in Ann Arbor, Michigan, the attorneys at the Trademark Lawyer Law Firm, PLLC work with entrepreneurs and business owners nationwide to help them register their marks with the USPTO and develop effective brand-protection strategies. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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