Can You Trademark a Scent?

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.

What Scents Can Be Registered as a Trademark?

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.

When Can Qualify for a Scent Trademark?

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:

• Actual evidence that the mark has acquired distinctiveness
• Use of a trademark for five years in the market
• Ownership of prior registrations

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.

Scent Trademark Examples

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:

• The signature scent of Play-Dough made by Hasbro
• Bubblegum scent for sandals made by Brazilian footwear company, Grendene
• Pina colada scent to coat ukuleles manufactured by The Eddy Finn Ukulele Co.
• The coconut scent in the Flip Flop Shops footwear chain
• The “flowery musk scent” smelled in Verizon stores
• Minty pain-relief patches made by Hisamitsu Pharmaceutical Co.
• Strawberry, grape, and cherry lubricants for combustion engines made by Manhattan Oil

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.

How Can You Protect Your Brand if You Can’t Trademark Register a Scent?

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.

Contact an Experienced Trademark Attorney

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.