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Yes, You Can Trademark Smells, But It’s Not Easy

By Eric C. Turnbull

 

What do trademarks smell like? According to Verizon, they smell like “flowery musk.”

Over the past few years, there has been a growing trend of companies seeking federal trademark registration of unique scents that aim to embody and reinforce their branding. This includes Verizon, who successfully trademarked a “flowery musk” scent for use in their retail stores. I’ve been inside Verizon stores, and I honestly cannot recall thinking to myself “wow, there’s so much flowery musk in here,” but then again that isn’t really the point. Trademarking scents is a very interesting and unique branding tool, as the medical world has widely noted that the sense of smell is closely linked with one’s memory and can trigger emotion and nostalgia. This link makes trademarking scents a potential subliminal tool to channel that emotion and nostalgia directly into a company’s branding. This is why we have Verizon stores that smell like flowery musk and United Airlines launching a signature “Landing” fragrance (described as a combination of orange peel, cedar, sandalwood, and leather).

While trademarking scents surely sounds like creative and out-of-the box thinking to reinforce branding, it is also, by its own nature, extremely difficult to achieve federal registration. This is because scents have two large issues that can prevent trademark protection – functionality and distinctiveness.

Functionality is exactly what it sounds like – it is the general concept that something serves a purpose or is otherwise essential for serving a purpose. Patented inventions are supposed to be functional and achieve some sort of purpose, but trademarks are not. Instead, trademarks are solely meant to identify the source of your goods or services, meaning your brand. Therefore, you will not see trademark registrations for scents from fragrance and perfume companies, as the scent is the brand’s functional purpose and actual product. To trademark a scent, you need to demonstrate that it is nonfunctional, meaning it is merely a smell that causes the consuming public to associate it with your goods and services (without actually playing an active role in your goods or services). Verizon sells phones and operates retail spaces, so the “flowery musk” scent is nonfunctional because it plays no utilitarian role in the actual goods and services Verizon offers.

However, perhaps the most difficult hurdle for scent marks is proving distinctiveness. Acquired distinctiveness is not an easy thing to prove for a scent mark, and there is a substantial amount of evidence necessary to establish acquired distinctiveness, including evidence of continuous use over a long period of time, annual sales, and advertising and marketing expenditures. As a result, most scent marks filed with the USPTO are amended to the Supplemental Register because they are unable to demonstrate the acquired distinctiveness necessary to be on the Principal Register. Being on the Supplemental Register means that the mark does not enjoy the presumption of ownership of a valid and enforceable trademark like a mark on the Principal Register. The mark is on file with the USPTO, but you have to prove the validity of your mark in court like any unregistered mark should there be an infringement dispute. There are two benefits to being on the Supplemental Register: (1) the owner still gets to use the ® designation, and (2) the mark’s presence on the Supplemental Register may prevent other prospective registrants from filing a similar mark.

In Verizon’s case, it failed to demonstrate acquired distinctiveness, which is why the “flowery musk” scent is only registered to the Supplemental Register. There is little benefit for the mark to be there – you can’t really smell a “®” and I doubt there is currently a ton of retailers looking to make their stores smell like “flowery musk” that would be deterred. Verizon will likely sit and wait, continuously spraying “flowery musk” all over their stores and collecting sales and advertising information, until they believe they have enough evidence of acquired distinctiveness to amend the mark onto the Principal Register. Until then, they would have to prove the mark’s acquired distinctiveness in court should any other retail stores start smelling like a Verizon store.

Scents are not often trademarked, but that doesn’t necessarily mean it is a bad idea. Under the right circumstances, an appropriate and well-crafted signature scent can endear the consuming public to a unique retail space or product and allow the brand to stand further apart from its competitors. However, if you are seeking trademark registration of a scent, be mindful of the functionality doctrine and be prepared for the long road that comes with proving acquired distinctiveness.

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