CAN TRADEMARK LAW PROTECT “INSTANTLY IDENTIFIABLE” FRAGRANCES SUCH AS LE LABO’S SANTAL 33?

1. CAN TRADEMARK LAW PROTECT “INSTANTLY IDENTIFIABLE” FRAGRANCES SUCH AS LE LABO’S SANTAL 33? Unfortunately for fragrance connoisseurs and veterans such as Eddie Roschi and Fabrice Penot, founders of the world-famous Le Labo’s Santal 33 fragrance, trademark law does not offer protections against copycats. Although consumers often “instantly” link the scent to a brand as they would “instantly” link a brand name to a brand, trademark law does not protect scents in the same way as it protects name brands. In 2006, Eddie Roschi and Fabrice Penot, fragrance connoisseurs and veterans, founded Le Labo in New York. The founders met while working together for Giorgio Armani’s perfume division. Since its inception in 2006, the world-famous fragrance maker expanded to more than 50 locations across the globe. As of November 3, 2014, Le Labo operates as a subsidiary of The Estée Lauder Companies Inc. Le Labo separates itself from prestige brands that often spend in excess of tens of millions of dollars in marketing efforts, by focusing its marketing efforts into niche markets. Perhaps Le Labo’s best know scent is its distinct and popular fragrance, Santal 33. According to the New York Times, Santal 33 began “as an antipode to mass- market scents.” The widely popular $180 unisex fragrance is a particular, distinctly musky scent, that combines aromas of leather and sandalwood. Although Santal 33’s scent creates an instant link to Le Labo in the minds of many consumers, the scent is unable to receive protection under trademark law. Trademark law protects a wide variety of subject matter. Very generally, any symbol or device that serves to identify and distinguish both the goods and the source of an entity’s goods from those of another is eligible for trademark protection. The trademark functionality doctrine limits the extent of trademark law. The trademark functionality doctrine prevents perfumes, fragrances, and scents such as Santal 33 from being protected by trademark law. The functionality doctrine prevents trademark law from inhibiting market competition because it allows for control over useful product features. Under the Lanham Act, a trademark which comprises any matter, that as a whole, is functional, is prohibited from trademark registration. In other words, trademark law does not protect purely functional trademarks. Trademark law only protects non-functional and source-identifying trademarks. Under the functionality test, a product feature is functional, and cannot serve as a trademark, if it essential to the use or purpose of the product or if it

2. affects the cost or quality of the product. The two general types of functionality are utilitarian functionality and aesthetic functionality. Utilitarian functionality provides that a product feature is functional if it serves a utilitarian purpose. In Trafix Devices, Inc. v. Marketing Displays, Inc., the United States Supreme Court held that a product feature is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.” Accordingly, where a product requires a product feature to optimally function, that product feature may not be protected by trademark law. Aesthetic functionality provides that a product feature is functional if it constitutes the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product. For example, a candy box in the shape of a heart may be functional because a consumer may wish to purchase it because of its significance as a gift to a loved one or a significant other. In contrast, a box without a distinct shape and perhaps only a ribbon surrounding it may not be functional. In recent years, courts adopted a test for aesthetic functionality which asks whether the allegedly functional design is “necessary to effective competition” between competitors. Accordingly, this may appear as if trademark law does not protect any scents. However, this is not the case. The United States Patent and Trademark Office allows for trademark law protection over scents because scents are not explicitly excluded by the Lanham Act. In order to be protected by trademark law, a scent must be inherently distinctive or its distinctive nature can be acquired through association of the scent with the scent’s producer. Practically speaking, this requires those seeking trademark protection for scents to provide substantial proof to prove that a scent is distinctive. Forms of such proof may include, statements from industry dealers or retailers, advertising evidence, brochures, and advertising expenditures. Last year, Hasbro the internationally renown toy company and the creator of the iconic Play- Doh, received trademark protection for its distinct Play-Doh smell, which it describes as a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough. Additional scents protected by trademark law include Verizon’s flowery musk scent used in its retailer stores, Grendene’s bubble gum scent used for shoes and flip- flops, Manhattan Oil’s cherry, grape, and strawberry scents used in connection with lubricants for land and water vehicles, Le Vian’s chocolate scent used in its retail locations, Eddy Finn Ukulele Co.’s piña colada scent used to coat ukuleles, Flip Flop Shop’s coconut suntan oil scent used in its retail locations, Lactona’s strawberry toothbrushes, and Hisamitsu Pharmaceutical Co.’s “minty” pain-relief patches. Unfortunately for Le Labo and other fragrance manufacturers, scents that serve a utilitarian purpose cannot be registered as trademarks, even though the scents have acquired distinctiveness. In other words, these fragrances serve the function of making the consumer smell better, and thus cannot be registered as trademarks and receive protection under trademark law. Although trademark law may not protect scents such as Santal 33, patent law and trade secret law may do so.