We all know trademark law protects “marks” or other indicia of origin used to identify the source of products and services such words, names, symbols, colors and even sounds.  However, many don’t realize that trademark law and other intellectual property strategies can also protect non-traditional marks like flavors and fragrances.   Anything that serves as a unique indicia of origin can be protected as a trademark.

In order to be registrable as a trademark, a flavor or fragrance must be used in a way intended to show consumers or potential purchasers a single source or origin for the goods in question.    That means it must be distinctive enough, or used in a way that the average consumer would recognize it as a trademark.  But you don’t commonly see scratch and sniff product labels at the grocery store, or consumers regularly tasting non-food products before they buy them to ensure that they are purchasing their preferred brand… so it can be a bit tricky getting your flavor or fragrance registered and it requires careful thought and planning before the effort is made, however, the rewards can be well worth the effort.

First, ensure that your proposed flavor or fragrance mark is non-functional.  That means you probably can’t obtain a registration for a scent that’s used in an air freshener, for example, because it’s an essential element of the purpose of the goods; i.e. the fragrant smell is the function of the purported mark (scent).  Along the same lines, trademark applications directed to, for instance, orange flavoring for medicines have been rejected because medicines are commonly expected to have some sort of taste or flavor to them and orange flavoring is a common feature of pharmaceutical products, again, the flavor functions to make the medicine more palatable as without the flavoring the product would be bitter and not taken as needed.

However, the Trademark Trial and Appeal board has held that a scent used in connection with yarn was eligible for trademark registration because consumers wouldn’t typically expect yarn to have a distinctive scent, and the yarn would function in the same way without the distinctive scent.  Can you think of non-functional uses for fragrances and would your business or your customers’ business benefit from protectable fragrances?

Protecting flavors is slightly more difficult than scents because of the functionality hurdle, but what about flavored pen caps, golf tees or tooth picks?  These are things that people occasionally chew on or otherwise put in their mouths, but aren’t expected to have a unique flavor.  Don’t forget, that trademarks must be used as an indicia of origin for a product.  If a consumer is not exposed to the flavor of the product before they purchase it, it cannot serve as a source indicator for that product, although that exposure can come from prior use so long as consumers come to recognize that flavor as an indicator of a specific brand.  For that reason, it is much more difficult to obtain a trademark registration for a flavor than it is for a scent and why planning a “flavor” branding campaign is important.

It’s not enough to simply add the flavor and expect it to be protectable. You need to have the concept of acquired distinctiveness in mind; i.e. the flavor has acquired a secondary meaning in the mind or consumers.  Acquired distinctiveness can be shown through the length of time the mark has been in use, evidence of extensive sales, advertising expenditures directed to the mark (flavor) and specific promotion of the mark (flavor), and unsolicited publicity.

Finally, be sure that your flavor or fragrance is sufficiently narrow and that you can clearly describe your scent or flavor (it is objectively recordable and identifiable; i.e. it has an identifiable signature that can be used to demonstrate, for example, infringement).  One of the fundamental goals of trademark law is to promote competition.  Allowing registration of a broad scent or flavor, like “floral” or “orange” would bar potential competitors from using any iteration of those scents, like “lily” or “tangerine,” and would inhibit competition.    Unique flavors and scents are built on subtle nuances, which must be considered when developing a flavor or scent to serve as a source indicator for your good or service and concomitantly drafting a trademark application that will be allowable and Registered.

Pardon our pun, but though it stinks, registration of non-traditional trademarks such as flavors and fragrances is more difficult to obtain, but that doesn’t necessarily mean it’s impossible.  And, don’t forget, flavors and fragrances may be protectable in other ways, such as by obtaining a patent . . .

 

Do you have a question about registering a flavor, fragrance or other potential trademark?  The McHattie Law Firm, LLC can help – info@mchattielaw.com.

(Abigail Nickerson)