Zachary Hiller Law Would a Rose Trademarked by Any Other Name Smell as Sweet?

Woman smelling roses. Trademarking a fragrance Zachary Hiller LawHave you ever walked through the drug store and noticed a litany of inexpensive fragrances? Many of them purport to be just like the designer fragrances that they modeled their scent from. “If you like Giorgio you will LOVE Primo!” or “Fly with Me” instead of Calvin Klein’s Escape. Have you ever wondered how they get away with this?

Typically patent law would protect a unique formula used to make a particular fragrance. This protection, however, doesn’t protect against knock-off fragrances that use similar scents with vastly different formulas. Trade secret laws may also protect fragrances but run into similar limitations. Some ingenious companies are looking to trademark courts to protect unique fragrances; scents intrinsic to their corporate brand.

Trademarking a Fragrance

Believe it or not, the first U.S. scent mark registration wasn’t issued until 1990, a mere 25 years ago. As we have covered in previous blogs on trademarks, they typically protect words, symbols, logos, pictures or even a color. The distinctive blue color of Tiffany’s, for example, represents such a trademark. All trademarks are enlisted to protect a company’s distinct and valuable brand; preventing any consumer confusion in the marketplace. And yet fragrance, up until fairly recently, has been excluded from such protections. Why? Well, like most intellectual property issues, the answer is somewhat complicated.

The first issue in trademarking a scent speaks to the nature of the fragrance. In order to prove to the courts that a scent can be trademarked the plaintiff must first prove that the fragrance in question is not a necessary result of the manufacturing process. This is called proving non-functionality of the fragrance. If the scent is essential to the purpose of the article, or if it affects the cost or quality of the article then it is considered a function of the manufacture of said article and cannot be trademarked. Someone who packages spices for a living could not, for example, rush out and try to grab the patent on the scent of cinnamon since it would prevent all other spice manufacturers from producing that product. The court’s intention is not to allow one trademark owner to control an intrinsic feature of said product. If the applicant can show that the fragrance acts as an identifier for the product without performing any other function in the product then the applicant may pass the sniff test for proving non-functionality of the fragrance.

The second issue in trademarking a fragrance is proving distinctiveness and this requires a great deal of evidence to prove in court. In order to make this claim, there must be proof that the applicant has used this distinctive scent for a number of years and serve as a distinctive identifier for the product. This test is much harder to prove. In fact, of the roughly two million trademarks listed on the trademark office’s principal register, only three have been granted the office’s full trademark protection.

That is not to say that companies aren’t looking into the power of fragrance for their brand. In a Wall Street Journal Article,  several companies have filed for trademark protection for signature scents related to their brand. Approximately a year ago, Verizon Wireless filed for protection for a “flowery musk” scent that they use to fragrance their destination stores in Boston, Chicago, Bloomington and here in Houston.

Similarly, United Continental Holdings also wants to trademark what they consider their “landing fragrance”. This is a bouquet of orange peel, leather, sandalwood and cedar that the company pumps into their lounges and boarding areas in their Chicago hub, O’Hare Airport.

Companies aren’t going to the expense simply because they like the smell of it all. In fact, there is a much more potent aroma in the air that leads to filings such as these, the smell of money. Science has long held that fragrance can be a powerful emotional trigger; leading people to reminisce on good thoughts or create calming and soothing feelings. Scent is the primary sense related to memory. It looks like United and Verizon are counting on these olfactory triggers to remind you to pull out your wallet and spend with them.

Right now, the idea of trademarking scents is truly in its infancy. As technology develops, who knows? We may see more companies following their nose to the trademark office.

If you are curious about trademark law, patent law, copyright law or any intellectual property law we are here to help. Curious to see if your product passes the intellectual property law sniff test? Feel free to contact The Law Firm of Zachary Hiller.

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