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The Zest

Can you trademark a scent, a color or a bottle shape? Non-traditional marks for beauty products

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Yes, a scent, a color and a bottle shape can each be a trademark, and the Supreme Court has said so for color. In practice they're the hardest marks to get. None of the three is treated as distinctive on day one, so you have to prove that customers already see it as your brand. And anything that does a job, like a perfume's fragrance or a pump that works better, is functional and can never be a trademark no matter how famous it gets. For a beauty brand, that means these marks are something you build toward after the name is registered, not something you file first.

The statute is wide, and the Court confirmed it

In Qualitex v. Jacobson, a 1995 case about a green-gold color on dry cleaning press pads, the Supreme Court held that "the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color," and that "there is no rule absolutely barring the use of color alone." The Court's reasoning applies beyond color: "over time, customers may come to treat a particular color on a product or its packaging as signifying a brand."

That's the open door. Two rules decide who gets through it.

Rule one: none of these is distinctive on its own

A word like "Marigold" for skincare can register the day you file, because it's inherently distinctive. Color, product design and scent don't work that way.

  • Color. The Trademark Manual of Examining Procedure (TMEP) states it flatly: "Single color marks are never inherently distinctive and can only be registered upon a showing of acquired distinctiveness." The burden "is substantial."
  • Product design. In Wal-Mart v. Samara, a 2000 case about copied children's clothing designs, the Court held that "a product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning." Its reasoning: consumers know that even an unusual design "is intended not to identify the source, but to render the product itself more useful or more appealing."
  • Scent. The TMEP says a scent "can never be inherently distinctive" and "requires a substantial showing of acquired distinctiveness." The example it cites is In re Clarke, where the scent of plumeria blossoms was held to function as a mark for sewing thread and embroidery yarn.

Packaging is the one exception. The TMEP says "product packaging trade dress may be inherently distinctive," following the Two Pesos restaurant decor case. A bottle is packaging for the serum inside it, so an unusual bottle has a better starting position than an unusual product. But the Court in Wal-Mart warned that in close cases "courts should err on the side of caution and classify ambiguous trade dress as product design," which means proving secondary meaning. A bottle that's also the product, like a solid perfume compact or a lip balm tube, sits right on that line.

Secondary meaning, also called acquired distinctiveness, is the claim that customers connect the feature to you. The statute allows the USPTO to accept five years of "substantially exclusive and continuous use" as prima facie evidence, but the TMEP says that for "certain product designs or colors," five years alone isn't enough and actual evidence of distinctiveness is required. That means sales, advertising that points to the feature, press, and often a survey.

Rule two: functional features never qualify

The statute bars registration of a mark that "comprises any matter that, as a whole, is functional," and this bar can't be overcome. The TMEP says a functional feature is refused "regardless of evidence showing that the proposed mark has acquired distinctiveness." The Supreme Court's test, from Qualitex and repeated in TrafFix, is whether the feature "is essential to the use or purpose of the article or if it affects the cost or quality of the article."

Here is the part that surprises people. The scent of a perfume cannot be a trademark for the perfume. The TMEP says "scents that serve a utilitarian purpose, such as the scent of perfume or an air freshener, are functional." Plumeria on yarn works because yarn doesn't need to smell like anything. A signature fragrance in a body lotion is a closer call, and the examining attorney will ask whether the scent is part of what the customer is buying.

The same test hits bottles and colors. The TMEP lists the factors the USPTO weighs for a shape: whether a utility patent discloses the design's advantages, whether your own advertising touts those advantages, whether alternative designs are available, and whether the shape comes from a cheaper or simpler way to make it. In TrafFix, the Court held that "a utility patent is strong evidence that the features therein claimed are functional," and that the Lanham Act doesn't protect a functional design "simply because an investment has been made to encourage the public to associate a particular functional feature" with one seller. For color, "a color may be functional if it yields a utilitarian or functional advantage," and the TMEP recognizes aesthetic functionality where "the color at issue provides specific competitive advantages." A pump that dispenses better, an airless jar that keeps a retinol stable, a dark amber bottle that protects the formula from light: those are features, not brands.

What each one takes in an application

A color mark needs a color drawing, a color claim, and a written description that "must be clear and specific, use ordinary language," and say where the color appears on the product or packaging. Your specimen has to show the color in use the way the description says.

A bottle shape is filed as trade dress, with a drawing of the three-dimensional shape and a description of what's claimed. If the shape can't register on the Principal Register yet, the statute lets a "configuration of goods" and "any matter that as a whole is not functional" register on the Supplemental Register, which gets the shape on record while you build the evidence for secondary meaning. I wrote about how trade dress gets enforced against copies in the article on dupes and trade dress.

A scent mark is described in words rather than drawn. The TMEP calls the evidence needed to show a scent functions as a mark "substantial."

What this means for your brand

Register the word mark first. It's the asset that protects you now. Then, if a color, a scent or a bottle is going to be your signature, design it so it isn't doing a job: pick a color the product doesn't need, a scent that isn't the point of the product, a shape that isn't the cheapest or the most useful way to hold a serum. Put the feature in your advertising on purpose, so you can show the USPTO later that you taught customers to see it as yours. Keep the records from day one. The claim you file in five years is built from what you do this year. I covered the general rules on what qualifies in the article on what can be trademarked, and how trademark differs from the design patent and copyright routes in the article on trademark, copyright and patent.

If you want to talk through whether a signature feature of your line is worth building toward, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

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(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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