TwelveSouth, a maker of accessories for the Apple, Inc. line of electronic products, recently unveiled an accessory that appears rather technologically challenged in comparison to their regular offerings. The newMac candle by TwelveSouth is touted to provide 45–55 hours of the scent of a newly unboxed MacBook – a scent which contains notes of “mint, peach, basil, lavender, mandarin, and sage”, according to the product description. The candle has been received extremely favorably by those die-hard fans of Apple, Inc. products, with TwelveSouth selling out within the first few days. But if the scent of a “new MacBook” is distinguishable enough to be attributed to the MacBook itself and not another source (e.g. the MacBook’s packaging material), could Apple trademark the scent and flare up against TwelveSouth for using it?

Trademarks provide a way to identify and distinguish goods and services provided by one party from those provided by other parties. A trademark grants a holder a largely exclusive method to brand and promote the holder’s products, while also providing a consumer the right to have certain expectations from the trademarked product and protection from potentially harmful knock-offs. Trademarks recognizable by sight are the most common form of trademark, including words, phrases, slogans, symbols, designs, domain names, select mascot and character designs, and combinations of such. As discussed in greater detail in “Color Me Trademarked,” trademarks recognizable by sight also include certain uses of colors. Examples of color-based trademarks include Reg. No. 3,579,003 for the yellow on a Wiffle Ball bat and Reg. No. 3,361,597 for the red sole on a Christian Louboutin shoe.

However, one cannot rely on sight alone when it comes to recognizing a trademark. Trademarks exist for a number of sounds, including Reg. No. 916,522 for the NBC three-tone chime, Reg. No. 1,395,550 for the MGM lion roar, Reg. No. 2,450,525 for the ESPN “Sportscenter” alert, Reg. No. 2,607,415 for the AFLAC duck quack, Reg. No. 3,137,680 for the opener two-beat of “Law and Order”, Reg. No. 3,618,321 for the Pillsbury Doughboy giggle, and Reg. No. 4,328,490 for the “60 Minutes” stopwatch tick. Additionally, one might consider being able to connect heard words, phrases, slogans, and the like to a particular source as being a trademark capable of recognition by both sight and sound. There is a touch/tactile-based trademark Reg. No. 3,896,100 exists for the texture of a leather wrapping around the middle surface of a wine bottle. While taste-based trademarks have yet to find footing with the United States Patent and Trademark Office (USPTO), Reg. No. 1,623,869 for the “original Rainbow Cone” for “an arcuate configuration of five flavors of ice cream, namely, chocolate, strawberry, palmer house (new York cherry with nuts), pistachio, and orange sherbet, arranged from bottom to top, as it is sold on a cone” may be a trademark capable of recognition based on the orientation of both the ice cream colors and flavors. Finally, there are also trademarked scents and smells, including Reg. No. 4,618,936 for a “flowery musk” scent to distinguish Verizon stores from “other communications and consumer electronics retailers in an increasingly crowded field”, Reg. No. 4,144,511 for scented ukulele varnish, and Reg. Nos. 2,568,512, 2,596,156, and 2,463,044 for scented fuel additives to combustion-powered vehicles.

So is TwelveSouth playing with fire with the newMac candle? Apple, Inc. could trademark the “new Macbook” scent if the company proves both (1) that the scent serves a non-functional purpose and (2) has acquired distinctiveness (two factors required to award any trademark). To date, there is no indication of any attempts made by Apple, Inc. to trademark the smell. Should Apple decide to file for protection of the scent and a trademark is subsequently awarded, however, Apple could consider a suit of trademark infringement or dilution (by blurring or by tarnishment) of their trademark. Infringement of the trademark is determined by the likelihood of confusion of the intended consumer regarding who owns the trademark. For example, a court might consider whether the consumer believes the TwelveSouth owns the scent or simply using the scent as a base for creating another Apple, Inc. product-specific accessory, alongside any additional factors from a sizeable bank defined by case law. To counter this, TwelveSouth might have a prior use defense to infringement since the use of the scent in the candle pre-dates any trademark. However, the success of the candle does rely on consumers being attracted to a scent pre-existing the candle, meaning consumers already attributed the smell to Apple, Inc. when choosing to purchase the candle, which could present some counter-argument difficulties to the defense. Dilution by blurring, where the connection between the trademark and its holder is lessened by a third-party’s use or the trademark becomes associated with a separate product, may be difficult to prove as the success of the newMac candle relies on the consumer connecting the candle scent to the “new MacBook” scent as created by Apple, Inc. instead of to a scent created by TwelveSouth. Dilution by tarnishment, where the a third-party using a trademark incorrectly harms the image of the holder of the trademark, may also be difficult to prove as the speed the newMac sold out suggests the candle contains a positive resemblance to the “new MacBook” scent.

For now, that is all theoretical in nature, but what is not theoretical is the newMac candle being another excellent example of what can be created by brand recognition. Brand recognition can take on a life of its own, shedding light on distinctive, recognizable, and potentially trademark-able characteristics for a company that the company itself might not have intended. Assuming Apple, Inc. was not aware of how desirable the “new MacBook” scent is prior to TwelveSouth distilling it in candle form, the success of the candle sales may have Apple, Inc. considering another possible way to market themselves. After all, if Verizon can utilize a trademarked “flowery musk” scent to assist in distinguishing Verizon stores from other technology retailers, perhaps Apple, Inc. could utilize the “new MacBook” scent (or at least a few newMac candles) for a similar benefit.