Scent Marks: The Future of Trademark Branding?

The primary purpose of a trademark is to create an immediate association in the minds of consumers between goods or services and their source of origin. A successful trademark sparks instantaneous brand recognition in the consumer. Trademarks are typically thought of as a word mark or logo used to identify a particular brand. However, unconventional trademarks, like the sound of the NBC broadcast network chimes or the red color of the soles of Christian Louboutin shoes, can be just as effective source identifiers of goods or services. Presently, chemicals that trigger our olfactory senses, or our sense of smell, are also being considered for trademark protection in the form of scent marks.

An applicant wishing to obtain federal registration of a scent mark must overcome two obstacles. First, a scent may only be registerable for trademark protection if the scent is used in a non-functional manner. For example, perfume fragrances and air fresheners are not registerable as scent marks because the product’s fragrance and the product’s function are one and the same; the product is used to enhance the smell of the wearer or the room in which it is sprayed. Second, once a scent is proven to be non- functional in nature, it must show acquired distinctiveness in order to be registered on the Principal Register. “Acquired distinctiveness” is achieved through the exclusive and continuous use of the mark in commerce for at least five years.

Flotek Industries, Inc. (Flotek), a Texas based producer of hydraulic-fracking fluid, is a recent example of a corporation seeking federal trademark protection from the United States Patent and Trademark Office (USPTO) for its scent mark. Flotek’s fracking fluids are engineered to possess a citrusy odor, the distinctive scent for which the company is pursuing federal trademark registration. Initially, the Trademark Examiner rejected Flotek’s application on the grounds that its specific orange-like scent served a functional purpose. However, Flotek successfully argued that the fracking fluids’ distinctive scent was not a functional feature of the product, but rather a “branding strategy.” The orange scent was specifically designed to distinguish Flotek’s fracking fluids from those of its competitors, thereby making it an “integral part” of the company’s marketing and branding of its product.

Used in this capacity, Flotek’s orange scent acts as a goods-source identifier for the consumer, clearly differentiating Flotek’s fracking fluids from other similar products on the market and fulfilling the purpose of a successful trademark. Additionally, as Flotek has used its citrus scented product in commerce for over five years, the scent mark has overcome the acquired distinctiveness threshold for registration on the Principal Register. As a result, registration of Flotek’s scent mark seems likely. Registration is also likely in light of the USPTO’s imminent approval, barring any opposition, of a Brazilian company’s application to register the bubble gum-like scent it uses as a source identifier of its sandals and flip flops.

It seems that use of scent marks may be a burgeoning trend in the trademark world. Verizon Wireless and United Continental Holdings, Inc. are also exploring the use of fragrances as source identifiers of their services. The upcoming months will tell if the scents associated with sandals and fracking fluid warrant federal trademark protection. If they do, it will be interesting to see if other companies will begin to follow suit with scent mark branding. The Principal Register might become much more aromatic.

If you have any intellectual property needs or issues to be addressed, including trademark, copyright or patent registration or infringement litigation, the attorneys at Korngut Paleudis LLC have the experience and expertise necessary to advise you of your rights. To discuss any of your intellectual property concerns, please contact the firm either through our website or at (212) 949-0138 in New York City, (914) 220-8270 in White Plains, or (203) 355-3635 in Stamford, Connecticut.