## Facts

- Celia Clarke, doing business as Osewez, applied to register a scent described as a floral fragrance (reminiscent of plumeria blossoms) for sewing thread and embroidery yarn.
- The scent was added deliberately to the goods and was asserted to be nonfunctional.
- Clarke claimed that, at the time, no other company offered scented embroidery yarn or thread.
- Clarke promoted the scented nature of the goods and submitted evidence that consumers, dealers, and distributors associated the scented thread and yarn with Osewez as the source.
- A USPTO examining attorney refused registration on the ground that the scent did not function as a trademark and would be perceived as product ornamentation, and also cited a competitive need to keep pleasant fragrances available.
- Clarke appealed the refusal to the Trademark Trial and Appeal Board (TTAB).

## Issues

1. Whether a scent applied to goods can function as a trademark for purposes of federal registration.
2. Whether the applied-for scent was nonfunctional for sewing thread and embroidery yarn.
3. Whether the record showed acquired distinctiveness such that relevant purchasers perceived the scent as indicating source.

## Decision

- The TTAB reversed the examining attorney’s refusal.
- The TTAB held that a scent may be registrable as a trademark when it is nonfunctional and has acquired distinctiveness as a source identifier.
- On the record presented, the TTAB concluded the floral scent for embroidery yarn and thread functioned as a mark and was eligible for registration.

## Legal Principles

- The Lanham Act permits registration of nontraditional marks when they are used in commerce to identify and distinguish source.
- Consumer perception is the central inquiry: the feature must be understood by relevant purchasers as indicating origin, not merely as an attractive product characteristic.
- A feature that is functional cannot be protected as a trademark; trademark protection is unavailable when exclusivity would confer a non-reputational competitive advantage.
- Product features such as scents typically require proof of acquired distinctiveness (secondary meaning) to establish trademark significance.
- Evidence supporting acquired distinctiveness may include substantially exclusive use, targeted promotion emphasizing the feature as source-identifying, and marketplace recognition among purchasers and intermediaries.

## Conclusion

The TTAB recognized that a product scent can serve as a trademark and be federally registered when it is nonfunctional and proven, through evidence of acquired distinctiveness, to identify a single source for the goods.


In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990)