Making Sense of Colors and Scents

Can a distinctive color or scent function as a mark for your product?


by Marie Lavalleye
Covington & Burling

Marie Lavalleye

We all know that a rose by any other name smells just as sweet. But can the scent or the color of a pharmaceutical product serve as a trademark for that product? The answer is yes, but only if certain conditions are met.

A trademark is defined as any word, name, symbol, device, or any combination thereof that identifies and distinguishes one party�s products from those of others and therefore acts as a source identifier. Colors and scents, under certain circumstances, can act as source identifiers in the same way that a word or a design can.

The color purple used in connection with Nexium antacid (�The Purple Pill�), the red and yellow colors of Tylenol gelcaps, the two-tone purple color scheme of the Advair inhaler, and the yellow stripes on Cardio Max nutritional supplements packaging are all examples of colors that function as marks.

Scents also have been recognized to function as marks for a variety of different products. For example, the manufacturer of sewing thread and embroidery yarn obtained a federal registration for a scent described as �a high-impact, fresh, floral fragrance reminiscent of plumeria blossoms.� Similarly, a manufacturer of synthetic lubricants for high-performance racing and recreational vehicles secured a federal registration for a cherry scent that it uses to distinguish its products from those of its competitors. Some companies have even developed distinct signature scents. For example, the Victoria�s Secret lingerie chain uses a specific potpourri scent as its signature scent. A scent could also be used as a trademark for a pharmaceutical product if the conditions described below are met.

Not all colors or scents that are used in connection with products are entitled to protection. A color or scent that is functional or utilitarian cannot be protected. Whether a color or scent is functional or utilitarian depends on whether the color or scent is essential to the use or purpose of the product or affects its cost or quality. If the color or scent facilitates the use of the product or enhances its desirability or quality in any way, it will likely be deemed functional or utilitarian.

For example, the amber color of a mouthwash has been deemed functional because the color signified that it was unflavored. The color pink also was denied protection as a mark for an antacid liquid on the ground that the color possessed a �psychosomatic� effect.

Even if nonfunctional, a color or scent cannot be protected unless it actually functions as a source identifier and has acquired distinctiveness. Therefore, you must ask yourself, �Does the color or scent function as a mark?� That is, does it identify and distinguish your product from those of your competitors? If it does not serve this source-identifying function, the color or scent cannot be protected as a mark. In addition, you must be able to show that you have used the color or scent in such a way that consumers do associate it with your product and your product alone.

Thus, if the color or scent that you have selected is commonly used in the pharmaceutical field, it is not likely that it would be recognized by consumers as a source identifier. The color white, for example, on a pharmaceutical tablet would not be so recognized and thus could not be registered as a mark.

The most-effective way to ensure that consumers see the color or scent as a source identifier is to highlight this feature in advertising and in other promotional materials, e.g., �The Purple Pill� or �Look for the familiar white and red box.� Merely depicting a product in advertisements or in other promotional materials without drawing attention to the source identifier function of its distinctive color or scent will not be sufficient to support a claim that the color or scent functions as a mark. 

Marie Lavalleye is a special counsel in the intellectual property group of Covington & Burling, a full-service law firm with offices in Washington, DC, New York City, San Francisco, London, and Brussels. Lavalleye specializes in trademark matters and advises pharmaceutical and cosmetic clients on trademark clearance, registration, licensing, infringement, and Internet matters. You may e-mail her at mlavalleye@cov.com. This column is part of the series contributed by TippingSprung. TippingSprung (New York City) offers translation and branding services with a focus on the needs of life sciences companies. Visit the company�s Web site at www.tippingsprung.com

No votes yet