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You Actually Can Trademark a Scent, and Many Other Things for that Matter

I often observe confusion among entrepreneurs and business owners regarding what they can trademark. Oftentimes, this lack of understanding can put business brands at risk by leaving them more vulnerable to trademark infringement. I provided you with a non-exhaustive breakdown regarding what can and cannot be trademarked.


So, what is subject to trademark?


Wordmarks:


The name of your company, product or service can usually be trademarked. Wordmarks are a very common and usually the first trademark that businesses or individuals register for with the United States Patent and Trademark Office (“U.S.P.T.O.”). Registering a name can provide further protection from businesses and individuals selling a similar product using your name and thus exploiting the goodwill your company has built. It also eases your ability to protect the name in countries with reciprocal registration rights to United States applicants.


Logos:


If your company has a logo, you should consider registering that trademark with the U.S.P.T.O. An example of a logo can be the Nike Swoosh, McDonald's arches or the Apple for Apple computers. Logos can be extremely important to a company’s brand. It’s almost always best to do two separate applications to the USPTO for the name and the logo. If you do not, you do not own the federal trademark rights to the name or the company by itself.


Trade Dress:


The first question you might have is “what is trade dress?” Trade dress, sometimes referred to as the forgotten trademark right, is simply a design that has inherent or acquired distinctiveness in your company. It can be a style of shoe, a clothing design, a style of a building, etc. Federal courts have defined trade dress as a product’s "total image" or "overall appearance" and "may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques." https://corporate.findlaw.com/intellectual-property/trade-dress-the-forgotten-trademark-right.html (quoting John H. Harland Co. v. Clarke Checks, Inc., 771 F.2d 966, 980 (11th Cir. 1983), cited with approval in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753 (1992)).


Trade dress may be overlooked by budding entrepreneurs, but protecting it is of the utmost importance. A trademark can further protect a competitor from hi-jacking your company’s image and profiting from its goodwill.


Scent Marks:


To many people’s surprise, you can trademark a scent. This type of trademark is not nearly as common as a name or logo, but it’s still recognized by the U.S.P.T.O. Verizon has trademarked their “flowery musk scent” in their stores: US Registration Number 4618936. However, scent trademarks often run into issues because of their inherent functionality issues. For instance, perfumes, cleaning products and colognes have an inherent problem because they are “the good themselves”; that is, they serve the purpose of masking or inducing a scent.” https://www.ipwatchdog.com/2017/12/21/scent-trademarks-complexities/id=91071/


Sound Marks:


You can also trademark sounds. 60 Minutes trademarked the ticking sound. The Law & Order opening credits sound is trademarked. This is something you’ll need to confer with your attorney on regarding the practicality of trademarking a sound.


Trademarking your mark with the U.S.P.T.O. can be an effective way to protect your brand instead of simply relying on your common law rights. You may be able to trademark certain characteristics of your business/product that you did not think possible. It’s best to speak with an attorney and have her review your product to assess what are the best next steps. It could end up being an excellent financial decision in the long run



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