scent mark of medicated trabsdermal patch

[khanhlinh]

What is the name of your state (only U.S. law)? Vietnam


In USPTO database, I found two serial number: 77420841 and 86719138. Then I saw both have similar description marks, similar class of goods and similar applicant. However, the reason of refusal has a significant difference on demonstrating whether the mark is functional or not. In 77420841, PTO said that "When the a scent is not functional, it may be registered...Howvever, the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial" (page 1 of Office Action dated 28/05/2008) and PTO did not give refusal with the reason of functional feature . In the meanwhile, according to Office Action dated 09/09/2015 of 86719138, PTO did not mention the argument as above, PTO surely affirmed that "the scent of applicant's goods are functional feature of the goods, and thus not registrable" (paragraph 2 of the unitoFcnal Refusal item). I think serial number 77420841would not be registered, I can't understand decision of USPTO. Can you give your opinion about this?

 

[quincy]

What is the name of your state (only U.S. law)? Vietnam


In USPTO database, I found two serial number: 77420841 and 86719138. Then I saw both have similar description marks, similar class of goods and similar applicant. However, the reason of refusal has a significant difference on demonstrating whether the mark is functional or not. In 77420841, PTO said that "When the a scent is not functional, it may be registered...Howvever, the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial" (page 1 of Office Action dated 28/05/2008) and PTO did not give refusal with the reason of functional feature . In the meanwhile, according to Office Action dated 09/09/2015 of 86719138, PTO did not mention the argument as above, PTO surely affirmed that "the scent of applicant's goods are functional feature of the goods, and thus not registrable" (paragraph 2 of the unitoFcnal Refusal item). I think serial number 77420841would not be registered, I can't understand decision of USPTO. Can you give your opinion about this?

Is there a reason beside curiosity that you are interested in these particular decisions?

Some scents can be distinctive enough to be recognized as a trademark. When consumers smell a certain smell, they know the origin of the product. Some scents are a natural byproduct of a product and cannot be rights-protected.

This is based on US law and the laws of Vietnam are different.

 

[khanhlinh]

Is there a reason beside curiosity that you are interested in these particular decisions?

Some scents can be distinctive enough to be recognized as a trademark. When consumers smell a certain smell, they know the origin of the product. Some scents are a natural byproduct of a product and cannot be rights-protected.

This is based on US law and the laws of Vietnam are different.

I am studying US law on scent mark, so I don't tend to compare US law to Vietnam law.
I sum up this case hereafter:
In 2008, Hisamitsu Co applied serial no 77420841 for minty scent for medicated transdermal patch with description mark: "the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate (10wt%) and methol (3wt%)". Then, in 2015, Hisamitus applied serial no 86719138 for minty scent for medicated transdermal patch with description mark: "the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate (10wt%) and methol (6wt%) and camphor (3.1wt%)". Notably, mint scent naturally is emitted from the compound of methyl salicylate and methol, therefore, the minty scent is functional and would not be registered. I think this arguement is very persuasive and this is also an arguement of USPTO on its office action of serial no 86719138. However, serial no 77420841 was registered. I can not understand. Do I misunderstand something in here?

 

[quincy]

I am studying US law on scent mark, so I don't tend to compare US law to Vietnam law.
I sum up this case hereafter:
In 2008, Hisamitsu Co applied serial no 77420841 for minty scent for medicated transdermal patch with description mark: "the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate (10wt%) and methol (3wt%)". Then, in 2015, Hisamitus applied serial no 86719138 for minty scent for medicated transdermal patch with description mark: "the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate (10wt%) and methol (6wt%) and camphor (3.1wt%)". Notably, mint scent naturally is emitted from the compound of methyl salicylate and methol, therefore, the minty scent is functional and would not be registered. I think this arguement is very persuasive and this is also an arguement of USPTO on its office action of serial no 86719138. However, serial no 77420841 was registered. I can not understand. Do I misunderstand something in here?

I haven't read the decisions yet. I will try to do so later. The minty-scented patches are a registered "smell" mark, though. The smell serves no practical functional purpose other than as a brand identifier.

 

[khanhlinh]

I haven't read the decisions yet. I will try to do so later. The minty-scented patches are a registered "smell" mark, though. The smell serves no practical functional purpose other than as a brand identifier.

I mean the combination of methyl salicylate, methol and camphor naturally emit a minty scent and many manufacters also use this combination. Hisamitsu can apply the scent of rose because the scent of rose does not connect with the combination of product but not minty scent

 

[quincy]

I mean the combination of methyl salicylate, methol and camphor naturally emit a minty scent and many manufacters also use this combination. Hisamitsu can apply the scent of rose because the scent of rose does not connect with the combination of product but not minty scent

If the scent is not a necessary part of the product and is used as an identifier only, it can be protected as a trademark.

For example, there are strawberry-scented toothbrushes with the strawberry scent a trademark of the toothbrush manufacturer. The strawberry scent is not a functional element of the toothbrush. There are bubblegum-scented sandals with the bubblegum scent acting as a scent trademark. The sandals do not need a scent to be sandals.

These scents, like the scent of musk when you enter a Verizon store, are used by the companies to connect in consumers minds a smell with the origin of particular goods, similar to how consumers will connect the smell of turkey with Thanksgiving or the smell of apple pie with home.

As a note, there are very few companies that attempt to use scent as a trademark identifier. It is not a very effective way to have your product/service stand out in the marketplace.

 

[khanhlinh]

If the scent is not a necessary part of the product and is used as an identifier only, it can be protected as a trademark.

For example, there are strawberry-scented toothbrushes with the strawberry scent a trademark of the toothbrush manufacturer. The strawberry scent is not a functional element of the toothbrush. There are bubblegum-scented sandals with the bubblegum scent acting as a scent trademark. The sandals do not need a scent to be sandals.

These scents, like the scent of musk when you enter a Verizon store, are used by the companies to connect in consumers minds a smell with the origin of particular goods, similar to how consumers will connect the smell of turkey with Thanksgiving or the smell of apple pie with home.

As a note, there are very few companies that attempt to use scent as a trademark identifier. It is not a very effective way to have your product/service stand out in the marketplace.

Yeah, you right. Companies totally can apply the smell of apple pie for home, because apple pie smell does not relevant to the house. But they cannot apply the scent of wood with wooden house, right? So my case is the same. Minty scent just is byproduct

 

[quincy]

Yeah, you right. Companies totally can apply the smell of apple pie for home, because apple pie smell does not relevant to the house. But they cannot apply the scent of wood with wooden house, right? So my case is the same. Minty scent just is byproduct

Your examples are good ones.