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Is it Patentable?
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   Patenting a Perfume?
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   Author  Topic: Patenting a Perfume?  (Read 8641 times)
CriterionD
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Re: Patenting a Perfume?
« Reply #10 on: May 16th, 2006, 12:34pm »
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In a theoretical sense  I would imagine it is possible that manufacturers of popular colognes/perfumes had the ability to obtain and maintain trademark protection relative to their scents but lost their rights due to failing to enforce them, persay.  I would also be curious to learn of past trademark infringement (scent based) lawsuits within the perfume arena -  I am not aware of any such case law but have never studied or researched the issue.
 
I am not aware of any trademark registration regarding the scent of a perfume.  But theoretically it should be possible to obtain trademark protection on such a scent if the scent is unique and is deemed as being used to help identify a perfume to consumers.  
 
"distinctively describes," I don't know.  For reference, the USPTO's website briefly states that a trademark "identifies and distinguishes the source of the goods of one party from those of others"
 
http://www.uspto.gov/web/offices/tac/doc/basic/trade_defin.htm
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JSonnabend
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Re: Patenting a Perfume?
« Reply #11 on: May 16th, 2006, 7:33pm »
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"Describe" and "descriptive" are terms of art in the trademark world, and one must be careful when using them.   CriterionD's earlier statement was akin to saying "obvious inventions are patentable".
 
I also misspoke somewhat.  Merely descriptive marks may, in many circumstances, be "registered" on the supplemental register.  Of course, enforcing a "supplementally registered" mark is about the same as enforcing a common law mark, and  so one would have to prove that the formerly merely descriptive mark had acquired distinctiveness.   If not, then it's still merely descriptive and not protectable as a trademark -- just as "obvious" inventions are not protectable under patent law.
 
Regarding registerability of scents for perfumes, the TTAB has stated in dicta that such scents are functional and so not registerable (In Re Clarke TTAB 1990).  I think this is wrong, as does at least one commentator I found, but I'm not aware of anyone pushing a refusal to the Fed. Cir.   There is at least one common law case (almost) on point, but I believe the "mark owner" conceded it had no rights in the fragrance in this one (I can't recall the case name, but it was a California case in the late '80s or early '90s concerning "knock off" fragrances of Calvin Klein -- i.e., "if you like Obsession, you'll love whatever").
 
- Jeff
« Last Edit: May 16th, 2006, 7:35pm by JSonnabend » IP Logged

SonnabendLaw
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CriterionD
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Re: Patenting a Perfume?
« Reply #12 on: May 16th, 2006, 10:37pm »
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on May 16th, 2006, 7:33pm, JSonnabend wrote:
CriterionD's earlier statement was akin to saying "obvious inventions are patentable".

 
yeah, thats probably the case.  I wasn't thinking about the legal/IP definition of descriptive/describe
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Isaac
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Re: Patenting a Perfume?
« Reply #13 on: May 17th, 2006, 6:53am »
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on May 16th, 2006, 7:33pm, JSonnabend wrote:
Regarding registerability of scents for perfumes, the TTAB has stated in dicta that such scents are functional and so not registerable (In Re Clarke TTAB 1990).  I think this is wrong, as does at least one commentator I found, but I'm not aware of anyone pushing a refusal to the Fed. Cir.   There is at least one common law case (almost) on point, but I believe the "mark owner" conceded it had no rights in the fragrance in this one (I can't recall the case name, but it was a California case in the late '80s or early '90s concerning "knock off" fragrances of Calvin Klein -- i.e., "if you like Obsession, you'll love whatever").

 
I'm a bit more inclined to go along with the PTO on this one.    Assuming that the formula is unprotectable, the smell is inherent to the underlying compound and is the important functional aspect of the perfume.   A grant of a trademark on the perfume would be akin to granting a never ending patent.
 
I think the smell of a perfume could be a trademark, but not as a mark for selling perfume.   If the perfume were being applied to fiberglass insulation maybe...
« Last Edit: May 17th, 2006, 6:55am by Isaac » IP Logged

Isaac
JSonnabend
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Re: Patenting a Perfume?
« Reply #14 on: May 17th, 2006, 7:58am »
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Ah, spoken like a true patent attorney!
 
I ask you this: what "functional aspect" of the perfume does the particular fragrance perform?  The "function" of perfume is to give off an odor (hopefully pleasing).  The particular fragrance performs no utilitarian function whatsoever, except to identify the brand of the perfume.  That's the classic "function" of a trademark.  The particular fragrance doesn't lower the production cost of the product nor make it work more efficiently or better; it's not "functional" in the relevant sense of of the word.
 
To the extent that one might argue against protection based on a theory of "aesthetic functionality", well, if that's the best an adversary had against my client, I wouldn't be rushing to settle.  I don't think "aesthetic functionality" will fly in any court anymore.
 
- Jeff
« Last Edit: May 17th, 2006, 8:00am by JSonnabend » IP Logged

SonnabendLaw
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