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.”
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 USPTO has announced that trademark fees in the United States will be undergoing significant increases on January 18, 2025. Here is a summary of the changes.
In addition to new Office Action response deadlines, the USPTO has announced that trademark fees in the United States will be significantly increased on January 18, 2025. Here is a summary of the changes.
Application Fees
You will no longer enjoy a discounted fee for filing a TEAS-Plus application instead of a TEAS-Standard application. All applications. other than applications filed under the Madrid Protocol, will require a fee of $350 per class. For Madrid applications, the fee is $600 per class.
Additional fees must be paid in the following situations:
Insufficient information in the application: $100
Use of a custom-made identification of goods or services (as distinguished from using one of the pre-approved descriptions appearing in the Trademark ID Manual): $100
Each additional group of 1,000 characters over the first 1,000 characters in an identification: $200.
Madrid applications are not subject to these additional fees.
Statement of Use Fees
Beginning January 18, 2025, filing a Statement of Use or an Amendment to Allege Use will cost $150 each instead of $100.
Maintenance Fees
The filing fee for a declaration of use under Section 8 or 71 will be $325 per class instead of $225 per class.
The filing fee for an affidavit of incontestability under Section 15 will be $250 per class.
The filing fee for a Section 9 registration will be $350.
In conjunction with the Trademark Office’s new audit program, these fee increases provide a strong incentive to review your registration portfolio to see if there are any registrations, or registration classes, that should be removed.
