In today's marketplace, companies are constantly seeking their moment, day, or --if they are lucky--year on the top of the "best of" list for new, unique, and/or fabulously redesigned goods or services.  The sheer number of competitors in any given industry, combined with the pace at which novel consumables and services are offered, makes it ever more difficult for companies to capture and maintain significant market share. 

While wittyphrases and eye catching symbols still lead the race in the types of trademarks typically filed-for and registered,  non-conventional marks, including color, scent, audible, taste, and configuration marks, are no longer a rarity.  And, because consumers react strongly to nontraditional trademarks, these types of marks can create even greater brand strength and product loyalty than traditional logos and brand names.  When it comes to protecting such non-traditional marks, the United States and Patent and Trademark Office ("PTO") will consider registrability of these marks under the various statutory sections of the Trademark Act, in particular with regard to whether such indicia are used in a nonfunctional manner under Sections 1, 2, and 45.

When it comes to scent marks, businesses in industries as far-flung as pharmaceutical and industrial equipment have been employing and seeking to register their smells as a way to distinguish their products from a sea of competitors.  Under Sections 1, 2 and 45 of the Trademark Act, a scent mark does not function as a trademark unless it is inherently distinctive. Marks that do not function as a trademark are not registrable at all – such as those that serve a utilitarian purpose, such as perfumes or air fresheners.  Similarly, the PTO has also refused registration for scent marks that are emitted naturally from the manufacturing process, registration of which would improperly bar competitors from using manufacturing methods necessary to their industry.

However, when a scent is not functional, it may be registered on the Supplemental Register, or on the Principal Register with a claim of acquired distinctiveness under Section 2(f).  See TMEP Sections 1202.02(a)-1202.02(a)(viii) and 1202.13.  Evidence of acquired distinctiveness generally includes evidence of sales of the goods under the mark in large dollar amounts, advertising expenditures, brochures and advertising evidence, and/or statements in the form of affidavits from industry savvy dealers or retailers recognizing the mark as a source identifier.

Examples of successfully registered scent marks include the following:

• "Scent of Bubble Gum," (Registration No. 4754435) for footwear and flip flop bags, owned by Grendene S.A., a Brazilian corporation.  The mark was registered on the Principal Register with a claim of acquired distinctiveness under Section 2(F) on June 16, 2015.  Here, the scent of bubble gum is inherently distinctive and has no utilitarian purpose with respect to the goods.

• "Scent of Rose Oil," (Registration No. 3849102), for advertising and marketing, owned by individual Kalin Manchev.  The mark was registered on the Supplemental Register on September 14, 2010.  Here, through the specimens filed with the PTO, the registrant showed that the products/services being advertised were scented with rose oil, indicating the registrant as the source of the promotional services.

• ​"Scent of Piña Colada," (Registration No. 4144511), for musical instruments, namely, ukuleles.  The mark was registered on the Supplemental Register on May 15, 2012.

Also of interest are those scent marks employed by enterprises that may be attempting to improve public goodwill by adding a pleasing scent association to an otherwise less-known or less-appealing industry.  For example, CESI Chemical, a subsidiary of Flotek Inc., a global supplier of drilling and production products and services to the energy and mining industries, developed and applied for the “Scent of Oranges,” covering chemical additives for fracturing fluid for use in oil and gas wells for Flotek’s hydraulic-fracturing fluids. The scent was referred to in various media reports as “eau de fracking.”  Although the PTO ultimately refused registration of the mark, there is no doubt that this scent mark would likely be found appealing to consumers -- at least more so than the thought of the smell of gas or oil normally emitted from fracking.

As these examples illustrate, while the process of registering scent marks can prove challenging, there are many marketing advantages to employing and registering scent marks, and the effort is worthwhile if it results in a unique source indicating identifier that may resonate more deeply with consumers than a typical visual trademark.