USA: requests for scent-based trademarks – rejection of “distinctive flavor of peppermint” and “a peppermint scent” for medicinal products

Symbole copyrightApplications to register the trademarks “distinctive flavor of peppermint” and “a peppermint scent” for a nitroglycerine  spray have recently been rejected by the  Trademark Trial and Appeal Board (TTAB) of the US Patents and Trademarks Office (USPTO). In the event, the TTAB highlighted the fact that the peppermint substance comprises a functional matter of the product and that the applicant had provided no proof as to the distinctive nature of the trademarks.

Peppermint as a functional characteristic of the product

The examiner held that peppermint has an exclusively functional characteristic within the product and is not a distinctive sign that could qualify it as a trademark. To clarify this “functional” notion, reference was made to the US Supreme Court case of Inwood Laboratories, INC v Ives Laboratories, INC in 1982 in which it was ruled that a characteristic of a product is “functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article”.

In this case, the defendant argued that it is an inactive ingredient of the medication that has no therapeutic properties. Thereby, according to him, it could not be considered to have a functional characteristic.

However, the examining attorney demonstrated by producing the description of an American patent granted for a nitroglycerine spray that the use of menthol improved the medicine’s effectiveness and limits its side effects.

The peppermint is therefore not superfluous but a truly useful ingredient of the medication.


The distinctive character

Distinctive character is an essential condition for obtaining a trademark. The mark must not only enable customers to distinguish the product from those of its competitors, but it must also be sufficiently different from the product or service designated.

The examining attorney stated that the use of peppermint in a nitroglycerine spray by the Company is not exclusive because it is also used in other sprays. He also underlined that aromas and scents have never intrinsically been of a distinctive nature and that therefore the applicant must demonstrate how this scent could fulfill the requirements of a trademark.

In the event, the applicant had provided no convincing proof as to the distinctiveness of the trademark.