By: Kelsey Shaughnessy
Crayola’s Chief Executive Officer Pete Ruggiero recognized the significance of the peculiar, yet memory-inducing smell of Crayola crayons when he obtained a scent trademark from the US Patent and Trademark Office (USPTO) in July 2024, after a six-year legal battle. Described as “slightly earthy soap with pungent, leather-like clay undertones,” Ruggiero envisions the scent to be diffused in the aisles of retailers to trigger nostalgic memories of coloring to drive sales for the iconic crayons. Crayola is among few companies to successfully obtain a scent trademark given the challenges associated with meeting the various aspects of these abstract marks. As more companies opt for complex intellectual property strategies to preserve market share, it is uncertain how the law protects scents as intellectual property.
Drafted in 1946, the Lanham Act governs federal trademark law. The Senate Committee on Patents established two goals for the Act when creating trademark legislation; first, to protect the public from confusion of products in commerce, and second, to protect manufacturer’s and merchant’s products by establishing distinctiveness in the market. In 1987, the Trademark Review Commission of the United States Trademark Association decided to review the Lanham Act and declared that a “symbol, or device” should be read “expansively” and not preclude the registration of “smells.”
The Lanham Act gives protection to traditional marks defined as any word, name, symbol, or device, or combination thereof, that indicates the source of a product or service, if used in commerce. Nontraditional marks such as scent, color, sound, are not specifically outlined in the Act. However, the USPTO reasons nontraditional marks are eligible for registration under Section 2(f) of the Lanham Act because they are not explicitly excluded from the statute and meet the same objectives of a traditional mark.
To register a scent trademark, the USPTO asserts the mark must be nonfunctional and distinctive. To be considered nonfunctional, the product must not be dependent upon the purpose for which it is created. For example, scents such as perfumes and fragrances are not registrable as they are considered functional given their utilitarian purpose. To be considered distinctive, a scent must be associated with the product. Distinctiveness is expensive to prove and requires substantial proof to demonstrate the mark is a source identifier.
In 1990, the first scent trademark was established in the United States when a California woman registered Plumeria blossom scented yarn in In re Clarke. After the Trademark Commission’s expansive interpretation of the Lanham Act regarding scents and the In re Clarke decision, one may predict an influx of scent trademark registrations in the United States. However, scent trademarks continue to be rare. As of 2022, there were only thirteen active scent trademark registrations. The answer to the inconsistency is likely found in the opaque physical and physiological properties of scents themselves.
Osphresiology, the study of the sense of smell, proves scents are inherently unique and complex. Science demonstrates scent is deeply connected with emotion and memory. Studies show olfactory sense is our oldest sense and more effective than our visual sense at triggering memory. In a survey of four hundred consumers, a study from the International Journal of Marketing Studies showed 84% of the consumers were more likely to purchase Nike running shoes in a “pleasant ambient scent[ed]” Nike store. A scent’s ability for strong brand association and consumer loyalty supports the purpose of trademark law: to grant legal protection to source indicators. However, an individual’s perspective on scent could be altered by a myriad of variables such as temperature, humidity, wind, age, gender, genetics, and memory, making a scent highly subjective. Furthermore, after the COVID-19 pandemic, anosmia is prevalent, causing an individual to lack the ability to distinguish between different scents.
In science, scents are not subjective. Scents are classified as a chemical formula through the use of gas chromatography and mass spectrometry technology. Both are analytical separation techniques used to create chemical profiles of molecules that make up the scent itself. With use of technology, scientists can differentiate between two scents by examining their chemical properties side-by-side, distinguishing even the simplest of changes between the structures. These methods for classification are common in science, unlike in law. For legal practitioners relying on humans instead of technology for classification, the ambiguous properties of scents contribute to the growing challenges of trademark registration and protection.
To register a scent mark, the USPTO does not require an applicant to submit a drawing, unlike other forms of intellectual property, such as a patent. Instead, the applicant is required to submit a specimen that contains the scent described in the mark’s registration. By registering the scent, an owner of the mark gains exclusive rights and legal protection against unauthorized use of the mark. Once the scent mark is registered with the USPTO, an applicant can bring an infringement claim in the United States. For infringement, the court considers key factors such as similarity of the registered scent to the infringed scent, strength and distinctiveness of the registered scent, and the similarity of the goods offered by the infringer in comparison to the owner of the mark. To date, there have been no scent trademark infringement claims in the United States.
It is profoundly unsettling the lack of judicial precedent with registered scent trademarks. Corporate reluctance toward registering non traditional marks appear prevalent evidenced by the minimal amount of registered scent trademarks. Reluctancy likely stems from the very essence of the mark, or scent itself, and its opaque physical and physiological properties. How a person perceives a scent is influenced by personal and environmental factors yielding immense subjectivity to the mark and the law.
When registering a scent trademark, subjectivity and confusion is prevalent. The USPTO relies on examining attorneys to determine the specificity of a scent by smelling the submitted specimen and comparing the scent to the written description on the registration. Determining a meaningful comparison between one registered scent and another is challenging when relying on an examining attorney’s nose and words, instead of scientific method. For example, Crayola’s registered scent mark of “slightly earthy soap with pungent, leather-like clay undertones” could describe the scent of a crayon and at the same time, could describe a product completely different than a crayon. The unreliability of scent creates confusion for an examining attorney during registration; moreover, for a fact finder in an infringement claim.
For a scent trademark infringement suit, scent subjectivity creates almost near impossible conditions in court. Recreating the circumstances of a scent from an objective perspective would be quite difficult given scent changes from person to person. Specificity is determined by the fact finder; however the fact finder is reliant on the variable conditions of the courtroom, e.g. temperature and humidity, and their demographics, e.g. sex, gender, and age. With varying conditions, a fact finder is unable to consistently distinguish the scents at issue to apply a likelihood of confusion analysis throughout the course of the trial. Moreso, introducing anosmia complicates legal matters as a fact finder with anosmia would be unable to differentiate between scents. Given a scent’s unpredictability, infringement cases continue to be unprecedented and nonexistent.
By integrating the law with scientific technology, scent subjectivity can be reduced. Given recent advancements in gas chromatography and mass spectrometry due to the COVID-19 pandemic, a graphical representation of a scent’s chemical profile can easily be created for each registered scent mark. Analogous to a fingerprint, gas chromatography and mass spectrometry identifies the unique characteristics of a scent’s chemical profile and standardizes the method of distinction with science instead of human interpretation. In turn, fact finders have more tools to identify, evaluate, and compare scents, to provide consistent judicial guidance for infringement cases.
Student Bio: Kelsey Shaughnessy is a third-year law student at Suffolk University Law School with a passion for Intellectual Property Law, particularly as it intersects with science and design. She is a staff member for the Journal of High Technology Law, where she explores the complexities of protecting creative rights in the digital age. She received a Bachelor’s of Arts in Finance and Economics from the University of Massachusetts in Amherst.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
