By Christopher R. McElwain
When people talk casually about the “trademark tanginess” of Cheez-Its or the “trademark scent” of Dior perfume, chances are they’re speaking figuratively. While the fragrances and flavors of certain products can certainly be distinctive, protecting these features with legally-enforceable trademarks is difficult and uncommon.
In the United States, trademarks can include almost anything that acts as way for consumers to identify the source of goods or services. The most traditional way to mark a product, of course, is with words or images. But the U.S. Patent and Trademark Office (USPTO) has long issued trademark registrations for distinctive packaging, product configurations, and other three-dimensional shapes (also known as “trade dress”) as well as source-indicative sounds like the MGM lion’s roar or NBC’s triple chimes. Trademark protection has even been extended to basic colors: bothPost-It yellow and UPS brown are now federally registered trademarks.
For companies hungry to protect the taste and smell of their products, the expansion of non-traditional trademarks might be a cause for salivation. And, indeed, the USPTO explicitly accepts applications seeking to register “scent, fragrance or flavor.” Unfortunately, this apparent openness is misleading. Registrations are rarely granted to scents or flavors.
Scent and flavor trademarks (and sound trademarks and trade dress for that matter) must clear two daunting hurdles. The first is “functionality.” If a product’s characteristic (its shape or its color or its smell or its taste) makes the product better or cheaper or somehow more desirable, it cannot also be a trademark. Otherwise, companies would be able to monopolize product quality under the guise of trademark enforcement. This is a difficult hurdle for scents and flavors, since the smell or taste of a product (at least those products that consumers are likely to be smelling and tasting) is often part of its function.
Even if the non-functionality hurdle can be cleared, however, scent and flavor trademarks are generally only entitled to registration on the Supplemental Register, which, while strategically beneficial in certain circumstances, does not bestow the exclusive trademark rights provided by the USPTO’s Principal Register. To move to the Principal Register, applicants face a second hurdle: showing that consumers actually regard the smell or taste of their products as trademarks. Because non-traditional trademarks are considered generally not to be “inherently distinctive,” applicants must demonstrate that their product’s smell or taste has become so well-known that it has achieved “acquired distinctiveness.” Meeting this heavy burden can be a costly enterprise involving consumer surveys, expert testimony, and evidence of the product’s market dominance.
Unlike words or pictures, which the USPTO presumes have acquired distinctiveness after 5 years of exclusive use, smells or tastes will only be registered in the face of “substantial” evidence that they function as trademarks. Not only must applicants show that the claimed aroma or flavor is uniquely associated with their brand, they must overcome an obvious problem with such non-visual marks: consumers don’t usually rely on sniffing or licking a product to figure out where it came from.
Currently, there are only two smell-based registrations on the Principal Register: Manhattan Oil’s 2001 registrationfor the “cherry scent” of its “synthetic lubricants for high performance racing and recreational vehicles” (Reg. No. 2463044) and Moroccanoil’s 2011 registration of a “high impact fragrance primarily consisting of musk, vanilla, rose, and lavender” for its “hair conditioners, namely, curl creams, hydrating styling creams, intense moisturizing masques, and styling and finishing oils” (Reg. No. 4057947).
It’s worth noting that neither registration is for perfumes or other goods for which fragrance is a key function. In allowing Manhattan Oil to use its cherry scent as a trademarked calling card, the USPTO presumably assumed consumers of motor oil to be indifferent to how their lubricants smell. Moroccanoil’s registration is somewhat more surprising from a functionality perspective, given how central fragrance arguably is to hair products, but the point was never raised by the USPTO, whose initial rejections of the application were based purely on lack-of-distinctiveness.
In both cases, the applicants submitted evidence, not only that their odors were widely recognized within their industries, but also that their situations were unique from a branding perspective. Both applicants claimed that consumers often encountered their goods in settings without visual clues as to brand: on tables at racetracks in the case of Manhattan Oil’s cherry lube (where oil is apparently poured into clear measuring cups before use) and through the intermediation of salon professionals in the case of Moroccanoil’s hair conditioner.
In contrast, the USPTO has never granted registration to a flavor. Indeed, in the few instances in which it has been asked to consider flavor applications (most notably, for an orange-flavored anti-depressant and for peppermint-flavored nitroglycerin sprays) it has stated that, while “nothing precludes recognition” of flavor as a trademark, it was “difficult to fathom exactly how a flavor could function as a source indicator.”
A hypothetical flavor registration would have to involve a product that consumers taste but do not buy specifically for its taste. Pharmaceuticals are an obvious candidate: in the two most recent test cases, the USPTO found that orange flavor functioned to mask the bitter taste of an anti-depressant and that peppermint oil might have therapeutic effects in the context of (tasteless) nitroglycerin sprays, but it did not entirely reject the idea that drug flavors might be non-functional. It would also need to involve some situation where consumers are putting the goods in their mouths without ever seeing the packaging, perhaps because they encounter the product through intermediaries. Not unfathomable, but clearly unusual.
In the meantime, brands continue to protect unique flavors the traditional way: by giving them unique names. Doritos may not be able to keep competitors from using a similar mix of seasonings, but it can keep them from calling the resulting flavor “COOL RANCH.”