Hasbro’s recent application to trademark the scent of Play-Doh is an example of how companies in the digital age market their products and protect their market share by using an complex intellectual property strategies. As more companies begin to implement nontraditional branding into their marketing strategies, they face legal uncertainties of how the law protects this form of intellectual property. Unfortunately, what qualifies as a legitimate scent mark remains opaque. This article will review the requirements of scent trademarks and discuss the complications associated with various aspects of these marks, including (1) the functionary doctrine; (2) the issue of scent subjectivity; (3) administrative and application difficulties; (4) the possibility of scent depletion; and (5) the uncertain benefits of scent trademarks.
Requirements of a Scent Trademark
The Lanham Act, which was enacted in 1946 and embodies federal trademark law, recognizes that traditional marks — any word, name, symbol, or device, or any combination thereof that could indicate the origins of a product or service — are eligible for protection if used in commerce. The statue did not expressly state whether a trademark can take the form of colors, smells, and sounds. The United States Patent and Trademark Office (USPTO) has since reasoned that because scents are not explicitly excluded from the statue, they are eligible for registration under Section 2(f) of the Lanham Act, affirming that scents can function and fulfill the objectives of a trademark. The first scent trademark was recognized by the 1990 Trademark Trial Appeal Board (TTAB) decision of In Re Clark for the “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms”.
In affirming that scents can be protected with a trademark, the USPTO asserted that trademark applicants will not be allowed to register the scent as a mark unless they prove that the scent is both nonfunctional and distinctive. To fulfill the nonfunctional standard, a product feature must not be “essential to the use or purpose of the article,” must not affect “the cost or quality of the article,” and must not be natural to the product or the result of the manufacturing process. In other words, scents that have a utilitarian purpose are ineligible for registration.
Like all trademarks, a scent mark must be distinctive. The scent can be inherently distinctive or its distinctive nature can be acquired through consumer association of the scent with the scent’s producer. The process of proving that a scent is distinctive is expensive because the application must be supported by substantial proof. Evidence that a scent has acquired distinctiveness generally takes the form of sales of the goods under the mark, advertising expenditures, brochures and advertising evidence, and/or statements in the form of affidavits from industry-savvy dealers or retailers recognizing the mark as a source identifier. If an applicant is unable to demonstrate that a scent has acquired distinctiveness, the USPTO will conclude that the scent does not denote the source of the goods and can only be registered on the Supplemental Register.
The Irony of the Functionality Doctrine
The most significant legal limitation to scent trademarks by far, and somewhat controversially, is the functionality doctrine, or the notion that any product feature that has a function is ineligible for trademark protection. Like all trademarks, the successful registration of a scent mark insures exclusive use indefinitely, so long as it continues to be used in commerce. The functionality doctrine was developed to serve as a safeguard in preventing anti-competitive behavior that could potentially stem from one entity claiming sole dominion over a useful product feature that competing products would necessarily share. On its face, the functionary doctrine seems to be a necessary safeguard in the promotion of healthy and fair competition. However, its application to scent trademarks challenges the doctrine’s traditional purpose by creating bizarre consequences.
The functionary doctrine makes olfactory marks for cleaning products, perfumes, and colognes ineligible for trademark protection because they are “the good themselves”; that is, they serve the purpose of masking or inducing a scent. While the doctrine makes sense in theory, it is silly to think that scents that serve a function such as Chanel No 5, arguably the world’s most iconic perfume and one that has held the beauty industry’s attention since its creation in 1921, is ineligible for protection despite widespread consumer recognition. It is ironic that a scent as famous and recognizable as Chanel No 5 is ineligible for trademark protection, leaving open the possibility of copycat products without the possibility of legal recourse.
The functionary doctrine can also kill scent mark applications in unforeseen ways. For example, in 2013 the pharmaceutical company Pohl-Boskamp GmbH & Co. KG tried to register the flavor and scent of peppermint as a trademark for a nitroglycerin spray used to treat chest pain. During the examination, it was found that the peppermint flavor makes the Nitrolingual Pumpspray product more effective at treating angina, so it was considered functional and therefore ineligible. As necessary as the functionary doctrine is to trademark law, its application to olfactory marks is less than ideal and in some case actually impairs the ability of some brands to protect their intellectual property.
The Issue of Subjectivity, the potential of Scent Confusion, and the Impossibility of Dealing with Infringers
One of the primary objectives of filing a trademark registration is to protect a brand’s reputation and products from competitors. In registering a trademark, applicants are asserting that consumers associate that mark with that company’s products and services, and that the mark serves as a critical shorthand for the applicant’s goodwill and marketing message. Trademarks are protected to encourage efficient and rational shopping by consumers, who use trademarks with little effort to quickly identify the source of origin, which signals the relative quality and price of an object bearing that mark.
Trademarks are only protectable to the extent that they differentiate themselves from existing marks. Marks fail to serve their intended function when they create a “likelihood of confusion” by being so similar to an existing mark that consumers are likely to confuse one mark with another. Scent trademarks provide a unique challenge to this standard because they are highly subjective.
An individual’s perception of a scent is influenced by a myriad of environmental variables such as temperature, humidity, and wind conditions. All of those variables can influence the potency of any given scent. Even if environmental conditions are replicated exactly, one person’s perception of an odor will differ greatly from another’s because of personal factors such as age, gender, and genetics. Additionally, a portion of the population have some form of anosmia, meaning that they lack the ability to discriminate between different aromas or ranges of smells. These variables create significant obstacles to making a meaningful comparison of one scent to another, making the outcome of a “likelihood of confusion” analysis impossible to predict. Without an objective standard that determines whether one scent is too similar to another scent and without the ability to classify or perceive scents universally, it is difficult to evaluate the similarity of scents. That difficulty ultimately makes the process of bringing an infringement claim to court more cumbersome and riskier than traditional trademark litigation.
Even more alarming is the absence of precedent that explains how a scent infringement claim should be handled by a court. Should a jury be asked to opine about whether one scent is too similar to another? If so, how should the scents be entered into evidence and how they can they be preserved in the record for appeal? If jurors do not decide the issue by using their collective sense of smell, should expert perfumers with an extraordinary sense of smell be allowed to testify about the likelihood of confusion for the ordinary consumer? Consumer surveys could be used to determine actual consumer confusion; however, this technique is costly and time consuming, and is an imperfect means of determining whether a scent is truly infringing.
In recent years, there has been a push to improve scent recognition and classification through the use of gas chromatography and mass spectrometry to create chemical profiles of odors, which could then be used to compare scents objectively. While this practice is becoming widely used, it is not an infallible means of detecting scent infringement or making scent profiles, as the court noted in Sherrell Perfumers Inc. v. Revlon Inc. Without a universal method of identifying and classifying scents and given their subjective nature, consumers are bound to be confused as more scents enter the marketplace. Without the ability to distinguish scents accurately, proving infringement might be an almost impossible task.
Administrative Difficulty of Scent Trademarks
Following the In Re Clarke decision, the USPTO amended the Trademark Manual of Examination Procedures (TMEP), establishing that scent marks are eligible for registration, but must comply with the requirements of traditional trademarks. The TMEP emphasizes that instead of a drawing of the mark, a written description must be submitted alongside a specimen in conjunction with the application. Both of these requirements remain vague and difficult to satisfy, contributing to the complications of filing an application and protecting a registration.
The written description is defined as “a detailed written description of the non-visual mark.” The description of a scent mark is significant in that it is not only used in the examining process — in which the USPTO will determine the legitimacy of the application — but in defining the scope of the trademark’s protection. The written description is thus of vital importance in setting the boundaries for competitors and establishing their potential liability for infringement.
Despite the obvious significance of the written description in any scent mark application, the USPTO has yet to provide clear guidelines as to what kind of information should be provided to describe a scent, or what kind of descriptive terminology will be accepted. With so much uncertainty, applicants have struggled to provide an accurate description of their marks. The choice seems to be between submitting a chemical formula to describe the scent or using descriptive language to describe the aroma. The written description requirement of the application has been criticized by some intellectual property scholars who assert that language is inherently imprecise and therefore incapable of communicating an accurate description of a scent. Even if a written description could be conceived, it would be fraught with the author’s biases, personal perceptions, scent memories, and physical limitations. The flawed reliance on language to describe scents has prevented the United States from adopting uniform standards that promote universal agreement about scent descriptions.
Moreover, the written description makes searching for existing scent marks unnecessarily difficult because language cannot truly capture the essence of the mark and there is no convenient way to warehouse scents. The ambiguity of the written description makes it difficult for applicants to anticipate and meet the USPTO’s application requirements, and makes it nearly impossible for companies to avoid the infringement of protected scents if they cannot reliably determine whether they might be using an infringing scent.
Finally, in recognizing that scents can function as a trademark, the USPTO requires that prospective applicants submit a specimen with their application. While this is a requirement for all trademark applications, the USPTO once again provides little guidance of how to properly provide a specimen, other than stating that the “specimen must contain the scent.” That unhelpful instruction does not specify the form of the specimen to be provided, does not suggest the most effective way of sharing the scent with examiners, and does not quantify how much of the sample scent should be provided. All of that is left to the discretion of the applicant. The lack of guidance makes the application process difficult and frustrating to navigate. Providing a sample is complex because some scents lose their potency after the passage of time and others, if not stored properly, could be contaminated with environmental odors that dilute or change the scent. Additionally, the quantity of the specimen provided to the examiner is important, considering that a small sample might be inadequate when used to make comparative analysis against new applications, for oppositions, cancelations proceedings, and infringing claims. Similarly, if an infringement claim were to come to trial, the specimen may be needed as evidence. Without more clarification, as to what constitutes a proper specimen, how that specimen will be stored by the USPTO, and how much of it should be supplied, the task of successfully providing an adequate sample is difficult, to say the least.
When nontraditional trademarks were first being considered in Qualitex, the theoretical argument of depletion was raised in opposition to the registration of color trademarks. During the USPTO’s examination, it was argued that colors are in “limited supply” and because of the finite number available, that granting a trademark for any particular hue would eventually leave no colors left for new competitors as they enter the marketplace, thus leaving these new businesses at a “significant disadvantage.” This argument was ultimately rejected by the court, which reasoned that if the registration of a color mark were to harm healthy competition, then the functionary doctrine would serve as a safeguard prohibiting the registration of these marks.
When considering depletion within the context of scent trademarks, the argument is considerably more complex. Arguably, the number of scents that are sufficiently unique to meet the requirements of a trademark and can be described in writing are few in number. IP practitioner James Hawes addressed the issue of scent depletion during In re Clark, arguing that scent depletion does not present a significant concern because there are “innumerable possible combinations and variations” of prospective scents. In other words, an infinite number of scents are available. However, this rational remains a contentious point as it applies to the competitive need for scents. As Bettina Elias notes, scent depletion is only a non-issue in cases where there is no competitive need for scents. In some areas of the marketplace, certain scents are more desired by consumers than others, such as the “soft smell” associated with tissues. Since there are a limited number of scents that fall within any particular categories and that are pleasurable to the human nose, the scent depletion argument is more salient and vexing than that of color depletion.
The Unclear Benefits of Registering a Scent Trademark
To date, there has never been a scent infringement claim brought to federal court and only a handful of scent trademarks have been successfully registered. The lack of precedent has made many practitioners concerned about how an infringement claim would be handled if one were to arise. The unique nature of scents and the lack of case law addressing infringement claims casts serious doubt on the benefits of having a scent mark.
Some of the key advantages to registering a trademark include: (1) it grants the right to use the registered trademark symbol: ®; (2) grants access to federal courts through the filing of a trademark infringement lawsuit; (3) allows plaintiffs to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees that result from infringement claims; (4) acts as a bar to the registration of confusingly similar marks; and (5) could serve as the basis for the international use of the mark.
A trademark owner puts the public on notice of the mark’s registration by displaying a small circled letter “®” attached to the mark. Having the “®” attached to a mark deters individuals and/or companies who are considering a similar mark, but it is impossible to attach the letter “®” to a scent. The inability to display ownership of a scent mark raises the question whether its registration would have the same benefit of deterrence as its traditional counterpart.
Furthermore, the ability to find and crack down on infringers, one of the key benefits of having federal trademark protection, is compromised when the mark is a scent. Owners of traditional trademarks often hire a third-party task force to surveil the marketplace and identify infringers or entities using a confusingly similar mark. By conducting searches through federal and state registers, the Internet, and business directories, these intellectual property patrols rely on records and data to help enforce the rights of trademark registrants. There is little that can be done, however, to search for an infringing or confusingly similar scent. Moreover, even if an infringing scent were found, the subjectivity issues discussed above would complicate the claim. Finally, scent trademarks are not universally recognized in all countries, which means that even if it were granted federal protection it might not be registerable or protectable abroad depending upon the jurisdiction.
Scientific research supports the belief that scents can aid in memory association which could be an influential tool used in marketing and branding campaigns across industries, yet corporations have been slow to adopt this new branding scheme in large part because of the uncertain legal standards and feasibility issues surrounding this area of trademark law. The disjunctive legal standards and difficulty of enforcing scent trademark rights have left producers confused as to how their investment will be protected if they were to venture into this new branding strategy and whether its benefits are worth it at all. For all the expenses and trouble scent trademarks can have in the registering process the benefits seem few in number. Without more clarity on the legal standards the govern scent trademarks olfactory branding will never be as useful as their traditional trademark counterparts.