Brand owners are increasingly tapping into the powerful realm of olfactory memory by using scent as a brand identifier. Conkle, Kremer & Engel, a pioneer in brand protection strategies, registered one of the only three fragrance trademarks ever on the U.S. Patent and Trademark Office Principal Register. In fact, CK&E registered the first ever U.S. fragrance trademark for personal care products.
Scent can evoke strong emotional reactions and create long-lasting memories, so a signature scent can be a critical element of an overall brand identity. As recently reported in The Los Angeles Times, retail clothing stores and hotels are beginning to use scent diffusers to greet consumers with their custom-made fragrances. Signature scents can also be introduced with products, such as Brazilian designer Melissa’s bubblegum scented plastic shoes or GM’s use of semisweet scented leather in Cadillac automobiles.
While brand owners often focus on traditional trademarks like brand names (word marks and stylized word marks) and logos (design marks), nontraditional trademarks like scent, sound and color may also be eligible for protection. In the United States, a scent mark can be registered as a trademark if it is used as a brand identifier, but only if it is neither functional nor naturally occurring in the goods or services. For example, the scent of elderflower cannot be protected as a trademark for use with perfume, as it would be functional, or for use with elderflower cordial, as it is naturally occurring. However, the scent of elderflower could be used as a trademark with stationery.
The next hurdle to registration on the Principal Register is secondary meaning. A brand owner must show that consumers associate the scent with the source of goods or services through evidence such as extensive use of the scent in commerce, advertising expenditure, affidavits from consumers, or surveys. In order to establish a signature scent as a registrable trademark, it is especially useful to provide evidence of advertising that specifically identifies the scent in connection with the goods or services (e.g., “stationery distinguished by its unique elderflower scent” or “always with our signature fragrance”).
As noted in Gilson on Trademarks, CK&E presented the USPTO with strong evidence that its client’s fragrance mark was not functional when used with hair care products, and CK&E submitted substantial, well-focused evidence of secondary meaning. As signature scents continue to develop as key elements of brand identities, more brand owners will seek trademark protection for their chosen fragrances. Brand owners should consider methods of protecting and enforcing their rights in nontraditional trademarks such as fragrance, color and sound.