Sound and Scent: Putting Trademark Examiners Senses to the Test

By:  Erica Paige Fang

As consumers, we recognize certain sounds associated with products from television or radio advertisements.  Some of these sounds are so distinguishing it is all that is needed to draw the name of the brand to your tongue.  Many of us probably do not realize we are hearing a registered trademark each time we hear the AFLAC duck, NBC chimes, the Pillsbury Dough Boy, or the MGM Entertainment lion roar.   

The United States Patent and Trademark Office (USPTO) will register a sound, or even a scent, when the sound creates an exclusive association between the product or services and the source of the product or services.  However, if the sound resembles or imitates commonplace sounds or those which listeners have been exposed under different circumstances, the applicant will be required to prove the sound has come to be exclusively associated with the applicant for the products or services for which the applicant is seeking registration.  For a distinct or unique sound, such as American Family Life Insurance’s AFLAC “quack,” proving the exclusive association would not be necessary because it does not resemble a commonplace duck quack.  The USPTO accepts sound files to show examiners the sound the applicant is seeking protection for. 

Registering a scent proves to be more difficult because an applicant must show that the fragrance serves no practical or functional purpose other than to help identify the source of the products or services.  This rules out any perfume or air freshener brands.  The electronic retail company Verizon was successful in obtaining a registered trademark for a scent they pump into their retail stores, which distinguish their store from other electronic retailers in October 2014 (Reg. 4618936).  Another scent trademark registration was issued in June 2015 for bubblegum scented jelly sandals (Reg. 4745535).  In 1995, the company Manhattan Oil filed trademarks for scented engine lubricants and obtained registrations for 3 fragrances (Reg. 2568512, 2596156, 24636044), making them the oldest scent trademarks that are live today.  In order to obtain a scent trademark registration, an applicant must be able to show the examiner how the scent will identify the source of the goods to consumers.  For the bubblegum sandal company, applicant sent in a sample sandal.  For larger items, like an entire scented retail store, that could pose a challenge. 

As entrepreneurs and business owners continue to create ways to stand out amongst the competitors, it is likely we will see more creative brand associations, such as sound and scent, and potential for registration with the USPTO to protect brand strength. 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.