Legal issues being addressed by legislators and courts today that do not involve, address, or relate to artificial intelligence or generative-AI systems, methods or tools. This category includes general copyright, trademark, tort, contract, and constitutional law
If you have a distinctive smell, you might be able to claim trademark rights in it.
If it smells like a trademark and it functions like a trademark, it might be a trademark.
Rose-Scented Tires
Sumitomo Rubber Industries has successfully applied for the registration of an olfactory trademark in India. It is the smell of a rose, as applied to tires. India’s Trademark Registry has now accepted it for advertisement.
This is not the first time Sumitomo has secured trademark protection for its smelly tires. In fact, the company’s rosy tire was the first smell mark registered in the United Kingdom, back in 1996.
It’s a Smell World
Since the U.K.’s venture into scent trademarks, smell trademarks have been approved in several other jurisdictions around the world.
In 1999, the European Union accepted an application to register the smell of freshly cut grass as a trademark for tennis balls. It quickly closed the door to scent marks, however, in 2002. In Sieeckmann v. German Patent and Trademark Office, trademark protection was sought for a “balsamically fruity” scent with “a slight hint of cinnamon.” The ECJ ruled that a chemical formula did not represent the odor, the written description was not sufficiently clear, precise and objective, and that a physical deposit of a sample of the scent did not constitute the “graphic representation” the applicable trademark law required. This closed the door to smell marks in the EU for many years.
The non-functionality requirement is the biggest obstacle for scent trademarks in the United States. The scent must be non-functional and serve only as a source identifier. Smells intrinsic to the purpose of a product will not qualify. So no trademark protection for the smell of a perfume or air freshener. And sorry, Burger King, probably no trademark for the smell of charred meat, either.
“Graphical Representation”
India’s statute requires trademark applicants to provide a graphical representation of the mark. This is what has stood in the way of smell claims in India all this time. Sumitomo, however, figured out a way to do it. It created a representation of the odor in “olfactory space.”
It worked.
Will Flavor Be the Next Frontier?
It is unlikely that flavors will join smells as registrable brand identifiers. Although theoretically possible, no flavor has ever been registered as a trademark in the United States. The USPTO has expressed doubt that a flavor could ever function as a trademark because it is functional. (TMEP 1202.13). Also, although a dog might do it, consumers normally do not taste a product to determine its origin before deciding whether to buy it. Merchants probably would frown on the practice, as would other customers in the store. Hopefully, stores do not allow dogs to sample products intended for human consumption, either.
Changing the spelling of, or adding or subtracting peripheral parts from, an existing trademark is not often likely to solve a likelihood of confusion problem, particularly when the goods or services are identical, similar, or related.
Sunkist is a trademark of Sunkist, Inc. This image is used for illustrative purposes only. No endorsement, sponsorship or affiliation with any company, product or brand is intended or implied.
The Jimi Hendrix song, “Purple Haze” contains one of the most famous misheard lyrics of all time. Ever fixated on sex and sexuality, many people insist that when he sings, “Excuse me while I kiss the sky,” he is saying, “Excuse me while I kiss this guy.” Kiss the sky and kiss this guy are near-homophones, that is to say, they are phrases that nearly sound alike. In the trademark world, homophones and near-homophones can create or contribute to a likelihood of confusion which, in turn, can result in a denial of registration to one of the marks and/or infringement liability.
Intrastate Distributors, Inc. applied to register KIST, both as a standard character mark and as a stylized mark, for soft drinks. Sunkist, Inc. filed an opposition to registration with the Trademark Trials and Appeals Board (TTAB), arguing that KIST is confusingly similar to SUNKIST, when used in connection with beverages. The TTAB dismissed the opposition, finding no likelihood of confusion.
On July 23, 2025, the U.S. Federal Circuit Court of Appeals reversed.
The DuPont Factors
Likelihood of confusion is a question of law that requires weighing of findings of fact on the DuPont factors. This list of factors comes from E.I. DuPont de Nemours v. Celanese Corp., a 1973 case that identified 13 factors relevant to likelihood-of-confusion analysis:
Similarity of the marks
Nature of the goods and services
Trade channels
Conditions of purchase (e.g., whether buyers of the product or service are likely to carefully consider options before purchasing, or are more likely to make a quick or impulsive purchasing decision.)
Fame
Number of similar trademarks used with similar goods or services
Actual confusion
History of concurrent use, if any
Variety of different products and services with which the trademark is used
Interactions and relationship between the applicant and the trademark owner
Extent of the applicant’s right to prevent others from using the trademark on specific goods or services
Potential confusion
Any other relevant information.
The analysis may focus on dispositive factors, such as similarity of the marks and relatedness of the goods. Also, as a general rule, the more related the goods or services are, the less similar the marks need to be to support a finding of likelihood of confusion.
In this case, the Board found four factors supported a finding of likelihood of confusion, but determined that KIST and SUNKIST were dissimilar. The Board believed they had different commercial impressions. KIST, the Board believed, referenced a kiss, while SUNKIST referenced the sun.
The Board relied on some of IDI’s marketing materials that depict a pair of lips adjacent to the word KIST. The Court of Appeals, however, noted that lips do not appear next to the word in all of the marketing materials. Nor was the image of lips claimed as part of the trademark. Therefore, the Court held that the Board’s finding that KIST references a kiss was not supported by substantial evidence.
The Court also determined that Sunkist did not always depict an image of a sun adjacent to its mark SUNKIST.
In short, when considered as standard character marks, not as design marks, SUNKIST and KIST are substantially similar and consumers are likely to confusedly believe that beverages using either of these marks come from the same source.
Confusing Similarity
Two marks may be confusingly similar if they are similar as to appearance, sound, meaning, or commercial impression. (TMEP 1207.01(b).) The test is not whether the two marks are linguistically distinguishable, but whether they are likely to give a consumer the impression that there is a commercial connection between them.
When assessing the likelihood of confusion between compound words, courts may appropriately identify a part of the term as the dominant part and other parts as peripheral. If the dominant part is distinctive, then greater weight may be assigned to the similarity between the dominant parts of two marks than to the peripheral parts. Thus, for example, regarding CYNERGIE and SYNERGY PEEL, the TTAB determined that SYNERGY was the dominant part of both marks, and that CYNERGIE and SYNERGY were sound-alikes. Consequently, they were confusingly similar. (TEMP 1207.01(b)(viii).)
Although the Court of Appeals did not invoke this particular rationale in its KIST decision, it seems to me that this doctrine also would support a determination that KIST and SUNKIST are confusingly similar. KIST is the dominant part of both marks and it is distinctive.
Conclusion
Changing the spelling of, or adding or subtracting peripheral parts from, an existing trademark is not often likely to solve a likelihood of confusion problem, particularly when the goods or services are identical, similar, or related. A standard character trademark search should look not only for identical matches but also for words and phrases which, although not identical, might look or sound similar, in whole or in part, or have meanings similar to the one you are trying to clear.
The Copyright Act imposes a 3-year limitations period for copyright infringement claims. But when does a claim accrue? That is the (potentially) million-dollar question.
Last year, the United States Supreme Court held that as long as a claim is timely filed, damages may be recovered for any loss or injury, including losses incurred more than three years before the claim is filed (Warner Chappell Music. v. Nealy). The Court expressed no opinion about whether the Copyright Act’s three-year limitation period begins to run when the infringing act occurs or when the victim discovers it, leaving that question for another day. “Another day” arrived, but the Court still declined to address it. What, if anything, can be made of that?
Statute of Limitations for Copyright Infringement
The Copyright Act imposes a 3-year limitations period for copyright infringement claims. Specifically:
No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.
But when does a claim accrue? That is the (potentially) million-dollar question.
According to the “incident of injury” rule, an infringement claim accrues when an infringing act occurs. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. 663, 670 (2014). Under this rule, an infringement victim who did not learn about an infringing act until three years after it occurred would be out luck.
Courts in many circuits, however, apply an alternative rule. Known as the “discovery rule,” it holds that a copyright infringement claim accrues when “the plaintiff discovers, or with due diligence should have discovered, the injury that forms the basis for the claim.” William A. Graham Co. v. Haughey, 568 F. 3d 425, 433 (CA3 2009) (internal quotation marks omitted). According to Patry on Copyright, this is the majority rule.
If a court applies the discovery rule, then the infringement complaint must be filed within three years after the victim learns or should reasonably have learned of the infringing act, even if that act occurred more than three years earlier.
The Look-Back Period for Damages
As I explained in Copyright Infringement Damages, the United States Supreme Court did not have the question about the validity of either accrual theory before it in Warner Chappell Music. Accordingly, it did not address the issue. Instead, the Court limited itself to deciding only the specific question before it, namely, whether damages can be claimed for all injuries that occurred before the victim learned (or reasonably should have learned) of an infringing act. The Court held that they can be. And this is true even for losses occurring more than three years before the infringement was discovered. Statutes of limitations only determine when a claim may be filed; they do not limit the look-back period for recovering damages for injury. “The Copyright Act contains no separate time-based limit on monetary recovery.” Warner Chappell Music, supra.
It must be kept in mind that the discovery rule has an important proviso. The clock starts clicking on a claim from the first date a victim actually knew or should have known of an infringement. In many cases, it may become more difficult to convince a judge that the victim’s unawareness of the infringing act was reasonable if a lot of time has gone by since the infringement occurred. Reasonableness, however, depends on all the facts and circumstances, so it has to be decided on a case-by-case basis.
RADesign, Inc. v. Ruthie Davis et al.
Michael Grecco Productions, Inc. sued RADesign, Inc. and others for copyright infringement. The complaint alleged that the defendant’s infringing use of a copyright-protected photograph began on August 16, 2017, and that the plaintiff discovered it on February 8, 2021. The complaint was filed in October, 2021. As a result, the claim would be barred under the “incident of injury” rule because it was filed more than three years after the alleged infringement occurred. The complaint, however, was filed in the Second Circuit, a jurisdiction that recognizes the discovery rule. Therefore, the question became whether the failure to discover the infringement within three years was reasonable. The district court held that it was not. The court described the copyright owner in this case as “sophisticated” in detecting and litigating infringements and therefore not entitled to the benefit of the discovery rule.
The Second Circuit Court of Appeals reversed, declaring, “This ‘sophisticated plaintiff’ rationale has no mooring to our cases.”
The U.S. Supreme Court’s Denial of Certiorari
RADesign, Inc. filed a petition for certiorari to the United States Supreme Court. The sole question presented was “Whether a claim ‘accrue[s]’ under the Copyright Act’s statute of limitations for civil actions, 17 U.S.C. 507(b), when the infringement occurs (the ‘injury rule’) or when a plaintiff discovers or reasonably should have discovered the infringement (the ‘discovery rule’).” The petition argued that the Copyright Act does not explicitly provide for a discovery rule and asserted that the courts of appeal should not have adopted one.
Unlike in Warner Chappell Music, the Court now had the validity of the discovery rule in copyright infringement cases squarely before it. The Court, however, declined the invitation to review that question. On June 16, 2025, it denied certiorari.
What a Denial of Certiorari Means
Really, the only legal effect of a denial of certiorari is that the lower court’s decision stands. In this case, that would mean that the Second Circuit Court of Appeals’ decision remains in effect for that specific case. For the time being, anyway, attorneys can cite the reasoning and holding of the Second Circuit Court of Appeals decision as legal precedent in other cases.
What a Denial of Certiorari Does Not Mean
A denial of certiorari does not mean that the Supreme Court agreed with the Court of Appeals. The Court of Appeal’s decision sets a precedent in the Second Circuit, but the denial of certiorari does not have that effect. It simply means the Supreme Court has decided not to trouble itself with the question at this time.
Caveats
Copyright owners and practitioners should not read too much into this decision. Even if the discovery rule forecloses a finding of untimeliness on the face of a complaint, a defendant may still be able to assert untimeliness as an affirmative defense. Again, the reasonableness of delayed acquisition of knowledge of infringement must be decided on a case-by-case basis. Copyright owners and their attorneys should be vigilant in detecting infringement of protected works and diligent in timely filing claims.
