IDEA Volume 61 Blog


Wednesday, February 10, 2021

Welcome to the IDEA Volume 60 Blog!

In this blog, we want to showcase our Associate Editors’ notes.  We encourage all of you to virtually attend the annual Student Note Symposium in April 2021. At this event, you can hear a short presentation from each Associate Editor about their research and the nuances of each area.  You can also learn about IDEA and the UNH Law Review. Thank you and enjoy!

Table of Contents

A “Trebled” System: Small Business Music Licensing in the Internet Age

By Nicole Demas, J.D. ‘22

The current complicated state of licensing music on social media platforms discourages compliance with copyright law. This results in small businesses losing out on advertising opportunities and copyright holders missing out on potential licensing revenue.

A recorded song includes two works of authorship. Both the composition of the song and the actual recording of the song involve separate copyrights. This results in a complex process for businesses or individuals who wish to use a music recording as part of a money-making venture. The business must obtain a license to both the recording and the underlying composition, a process which requires first determining who owns the rights and second gaining permission from all owners to use the music.

Due to the difficulty of obtaining a license by contacting the various copyright owners, the average person licenses music by contracting with foundations like the American Society of Composers, Authors and Publishers (“ASCAP”). ASCAP provides a wide range of music licenses, for everything from music played over a website to songs performed by cover bands in restaurants. The cost of these licenses adjusts based on a variety of factors dependent on the business type. For example, a bar that has a larger capacity and features live music seven nights a week will pay a higher licensing fee than a smaller venue that only has performers on the weekends.

However, when music is made available on the internet, further difficulties arise. While ASCAP provides licenses for an individual to upload songs on their own website or app, they do not provide licenses to upload content containing music to social media sites like Facebook or YouTube. Licenses may be obtained by the individual on a song-by-song basis, but this requires a time-consuming process of finding the owners of each song the individual would like to use and contacting them directly to gain permission to use the song.

This can result in major obstacles for small companies who are attempting to advertise their services. For example, if a company, who already has an ASCAP license for its ballet classes, attempts to then upload a video of a performance to share with friends and family, they are likely to run afoul of the YouTube Content ID system, an AI which flags and removes videos that violate copyright. These business owners would be happy to pay a fee along with their normal ASCAP license so that they could more easily take advantage of the advertising opportunities the internet provides. But instead, copyright owners are missing an opportunity to collect licensing fees, and small businesses are disadvantaged in the internet marketplace.

This law review note proposes a new class of music licenses, that scales based on the type of license currently held by the small business. This would better respond to the reality that social media is increasingly essential to small business owners and provide an opportunity for copyright holders to receive money for the use of their intellectual property.

Expanding Right of Publicity to Fictional Characters: Character Right of Publicity

By Ji Hye Hwang, J.D. ‘22

Do you know the band Gorillaz? Gorillaz is a virtual band, born in 1998. They have four animated members instead of human members, but they release albums like human bands. Can the members of Gorillaz be protected as same as other celebrities?

Have you heard of the singer Hatsune Miku from Japan? She was born in 2007, has very good singing voice, and has 2.2M followers on social media. In fact, however, she is an animated character and her voice is computer-generated, from the voice synthesizing software called Vocaloid. Although she is a virtual singer, she performs on a stage and holds concerts in front of thousands of audiences. Then, is Hatsune Miku a “celebrity” like other famous singers? If so, will she be able to protect her publicity right?

What about a real-life group singer having virtual characters that match each of the members? In Korea, a group called “aespa” debuted in November 2020, with four human members and four matching virtual avatars; each human member is connected to the matching avatar in the virtual world.  Although not much has been revealed about the group yet, its label SM Entertainment explained in the 1st World Cultural Industry Forum (WCIF) that the avatar members have AI brains as different creatures, and human members and avatar members interact through the intermediate “digital world” between the real and virtual worlds. If each avatar matches each member of the group as a different creature, and therefore the group “aespa” also exists in the virtual world, will the avatar members get the same publicity right as the human members?

Along with the technological development, the ways of creating characters and the ways of audiences experiencing the characters have diversified. While only two-dimensional drawings or descriptions in writing were the main methods of “creating” a character in the past, nowadays, creators can easily make animated or holographic characters, non-human computers can generate characters, one character can be used in various entertainment industries, and the audience can even “meet” characters in augmented reality (AR) or virtual reality (VR). In fact, this change started relatively a long time ago with the development of the internet, since the late 1990s, and it recently has been accelerated by the fast advancement of technology, which will soon blur the line between the real and virtual worlds.

However, when the world has already been moving forward toward building a virtual world with characters, legal protections for fictional characters are still lacking; traditional legal protections like copyright and trademarks will, or maybe already did, face their limitations, as the world of characters has been moving forward for more than 20 years. Although there have been several amendments to the Copyright Act, there still are ambiguous areas where the existing law conflicts with fast-evolving media and technology. While trademarks law can implement some of those ambiguous areas, since the purpose of trademarks is to protect consumers, it might give more weight on one side, which would result in an imbalance of private and public interests.

We are about to face a new innovative entertainment world with the vast advancement of technology; therefore, legal protections for creations should also take a step forward, especially in this time when the pandemic is pushing technology to develop faster. This note will argue that expanding the right of publicity to fictional character “celebrities,” including two-dimensional, holographical, and virtual characters, would better achieve the purpose of intellectual property law because having character right of publicity will help cover the ambiguous areas in existing IP law concerning already-existing characters as well as newly developing areas of fictional characters, such as virtual singers, avatars, and even robot characters. It will end with suggesting some adjustments when adopting the right of publicity for fictional characters.

Nolo Pleas and Convictions as Evidence: the Rule 410 Circuit Split

By Paul Kline, J.D. ‘22

The recent Eleventh Circuit case U.S. v. Green, 873 F.3d 846 (2017) held that a defendant’s prior conviction based on their nolo contendere (“no contest”) plea could be used in a subsequent trial to prove that the defendant committed the crime they plead nolo contendere to. In doing so, the court declared that Federal Rule 410 of Evidence only prohibited evidence of the nolo plea, not of the subsequent conviction.

The Eleventh Circuit’s position in Green had previously been rejected in varying degrees by most of the other Circuits. Most permit evidence of a nolo conviction only to prove something other than that the defendant committed the noloed crime. Because nolo pleas are rare, not every circuit has passed judgment on the issue, and the Supreme Court has not yet considered the question.

Traditionally, a plea of nolo contendere—in place of a guilty plea, is “a last resort…for difficult defendants who simply will not admit guilt.” This plea promotes efficiency by giving defendants a modicum of bargaining power and an additional avenue for prosecutors who wish to avoid a costly and time-consuming trial. The defendant agrees not to contest the charges and submits to the punishment without admitting they committed the charged crime. The Supreme Court, in North Carolina v. Alford, 400 U.S. 25 (1970), allowed the defendant to plead guilty while protesting his innocence. Courts that accept this type of plea, dubbed the Alford plea, treat it like a nolo plea. 

Rule 410, formally enacted in 1975, follows the modern tack of evidence law to exclude potentially probative but definitely problematic evidence from being received by the jury. The policy consideration that animates Rule 410 is an encouragement to compromise in criminal cases. By not allowing evidence of pleas in subsequent trials, defendants are incentivized to plead out, lessening their potential civil liability. Rules 413-415, enacted separately from 410, also implicate nolo pleas and convictions. These rules have different policy decisions behind their creation, and so require a different analysis than 410.

This note will lay out the law regarding nolo convictions and the federal rules in each federal circuit, examining the rationales behind them to provide a recommendation for how the circuit split should or should not be resolved.

Mismatched Incentives: Behavioral Science and Privacy Law Reform

By Cameron Lindsay, J.D. ‘22

Behavioral science explains why people act the way they do. Through behavioral engineering, certain behaviors can be reprogramed or changed. The key to behavioral change is finding the proper antecedent or incentive. Current conflicting incentives in privacy law, if not addressed, threaten to undermine the efficacy of privacy law reform.

People really like free things. Indeed, studies have shown that most people are terrible at estimating the value of free goods and services, or the value of the time spent to acquire free goods and services. If someone cannot count on their fingers, it is unlikely that they can do algebra. Similarly, if consumers cannot properly value free tangible transactions, it is unlikely that they can properly value free intangible transactions.

Right now, consumers pay for many online services with their personal data: these services are not free. Even though the transaction is non-traditional and no money is exchanged, the transaction still has incredible value. The incentive for consumers to understand the value of this new-age transaction is very low. The consumer incentive is low because the amount of work required to understand personal data transactions far outweighs the small gains in observable value.

Understanding the value of personal data does not substantially increase consumption power. Consumers who understand the value of personal data cannot change service agreements or start charging companies for their personal information, and it is often impractical to stop using the service in question.

Personal data is most valuable when compiled and analyzed. Personal data cannot really be boxed up and auctioned off on eBay. Companies are the only buyers, and with a constant, nearly limitless, and basically free supply of personal data, the demand for one single consumer’s personal data is next to nothing.

Often, the more consumers learn about personal data, the more they realize how hard it is to protect. Understanding how to protect personal data can be moderately valuable to consumers, but avoiding personal data collection is akin to living like a hermit. Further, any attempt to remove previously collected data is a nigh-impossible, Herculean task. Consumers face steep uphill battles at every turn.

Companies have a high incentive to cheaply collect and analyze personal data. Increased company profits make happy shareholders, and many companies capitalize on the average consumer’s lack of technical knowledge by collecting and analyzing personal data for a huge return on investment.

Big-data analysis of personal data can provide revenue and near-immediate market feedback to companies. Companies are willing to trade their goods and services for personal data, and consumers are all too happy to oblige. Consumers and companies are transacting with the 21st-century company-minted and company-regulated currency of personal data.

On the other hand, recently, companies have been out of vogue with consumers. Companies such as Facebook, Twitter, Amazon, Google, and Microsoft have come under attack by consumers and consumer advocacy groups for a whole host of issues. Many calls for privacy reform strongly align with this general anti-company sentiment.

While some consumer ill-will towards companies is likely well-deserved, most companies under attack provide important goods and services that dramatically improve consumers’ lives. At the end of the day, companies need capital to operate, and although the balance unfairly tips in favor of companies right now, it is just as unfair to instead demand consumers should get the better deal.

Until consumer incentives and company incentives align, privacy law reformation can only enjoy moderate success. True change comes when root issues are addressed. Behavioral science sheds light on root issues within privacy law reform and provides scientifically tested methods to enact incentive change.

The Need to Simplify Patent Subject Matter Eligibility Under § 101

By J. Mitchell Lowe, J.D. ‘22

One of the keys to the United States’ economic success has been the fertile environment it creates for innovation.  The United States has helped cultivate this fertile environment by offering effective patent protection.  However, what once was a rich and lush environment has begun to see signs of decline.  The increasingly inhospitable environment for innovation in the United States is due in large part to recent failures in one area of patent law—patent subject matter eligibility.  Since the Supreme Court’s decisions in Alice and Mayo, patent subject matter eligibility has become the most confounding and controversial issue in all of patent law, crippling the U.S. patent system. 

For an invention to be patented, it must fulfill the requirements of 35 U.S.C. § 101.  Under § 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.”  However, the U.S. Supreme Court has long held that § 101 contains several implicit exceptions that are not patentable, namely laws of nature, natural phenomena, and abstract ideas. 

In conjunction with its judicial exceptions, the Supreme Court’s Alice and Mayo precedents produce a two-step framework for distinguishing patents that claim a judicial exception from those that claim patent eligible applications of those exceptions.  While at first glance the test may seem simple enough, its application has resulted in a lack of consistency and predictability, not to mention a substantial increase in the likelihood of rejection for patent ineligible subject matter. 

The judicial exceptions to § 101 and the Alice/Mayo framework create undue confusion and seem to raise the bar for patent subject matter eligibility, leading to unpredictability and uncertainty in patent law.  The result is a detrimental effect on innovation in key areas like biotechnology and computer software, and an increasingly hostile environment for innovation in the United States.

This note will summarize the current state of patent subject matter eligibility, including § 101 and congressional intent, the Supreme Court’s judicial exceptions, and the application of the Alice/Mayo test.  It will also evaluate the fallout of the current jurisprudence and explore the recent attempts to fix patent subject matter eligibility.  Finally, the note will propose a simple resolution to clarify patent subject matter eligibility.  This proposal will involve asking Congress to reassert its authority and return patent subject matter eligibility to its roots, as well as eliminate any novelty and obvious determinations from the patent subject matter eligibility evaluation.  Simplifying patent subject matter eligibility will allow the United States to truly thrive again as a fertile environment for innovation. 

Charity Streaming – Conflicts with Copyright Backed Professional Esports Leagues

By Justin Mader, J.D. ‘22

The world of Esports is one of the most budding sources of interest, and in turn, revenue, in the modern technological age of sports. This growth in professional gaming has coincided with the growth of a different type of entertainment, videogaming live streaming. Through platforms such as Twitch, YouTube, and other smaller websites, enthusiasts are able to tune into their favorite personalities as they play videogames. Some of these streams are what have been dubbed charity streams, where the proceeds from the event go to a charitable organization rather than the individual streaming the videogame.

While the use of videogame streaming websites may seem like a good source of advertising for the videogame developer, there are some games that have such a competitive following that they have spawned professional leagues, creating a market for competitive play. These leagues are run by the videogame developers themselves as the sole copyright holder. A question that so far has been unaddressed is whether smaller tournaments run by individuals on streaming platforms will be targeted by videogame developers enforcing their copyright.

In the past videogame developers have used their enforceable right to exclude others from their videogames by shutting down tournaments that do not have permission to use the videogame. In 2013, Nintendo did exactly this by going after a fighting-style videogame tournament that wanted to have, as part of its tournament, the very popular game of Super Smash Bros. Melee. After pushback from the fans, Nintendo relented and allowed the tournament to continue. However, Nintendo was completely within their legal rights, as it was even admitted by the tournament organizers, to shut down that portion of the tournament.

The world of Esports law is also very fluid as there is active debate as to whether this gaming is considered a sport, entertainment, or both. While this debate may never fully be settled, the law that governs Esports has also left this question open. Videogames are protected as audiovisual works under 17 U.S.C. § 102. However, as far as how those rights are used in conjunction with professional sports leagues where the copyrighted material is the game itself is unclear.

Previous literature has brought forth an idea to bring anticompetitive legislation to the Esports realm to try and curb future controversies in the Esports world. This proposed law included an Opt-in system modeled after the Music Modernization Act. This note proposes a provision that protects charitable streams through an administrative process at the copyright office, allowing them to stream for good causes without fear of cease and desist letters from videogame developers.

How Blockchain May Shape The Future of Copyright Law

By Logan Murr, J.D. ‘22

Blockchain technology first emerged in 2008 when Satoshi Nakamoto released a paper, “Bitcoin: A Peer-to-Peer Electronic Cash System.” Bitcoin was the first application of blockchain technology. Though the identity of Satoshi Nakamoto has never been discovered, the implications of the paper are profound.

Blockchain is a cryptographically secure distributed ledger that can be applied in a variety of ways. Blockchain technology has the potential to disrupt nearly every industry. For example, blockchain could potentially remove the need for intermediaries like VISA for financial transactions and revolutionize the way in which contracting occurs, and records are kept.

Blockchain technology presents an opportunity for the creation of a global registry of copyrighted works that could provide copyright holders with expanded protection for their works. A blockchain registry would provide an immutable ledger of copyrighted works, making it easy for the public to know who owns the rights to copyrighted works.

While the prospect of a blockchain registry is promising, blockchain technology also poses significant infringement risks. Many blockchain-based social media platforms have emerged in recent years that mirror the functionality of traditional centralized social media platforms. These blockchain-based platforms run on a distributed network rather than a centralized network, which removes the control of the data on the network from centralized tech giants and places control in the hands of every computer or node on the network.

A major reason for the interest in this distributed system is that it provides users with an increase in privacy and a decrease in the ability of private companies to control content. However, the increased freedom creates an issue of eradicating infringing content on these platforms. When content is hosted on a centralized network-based platform, it can easily be removed by the company that controls that centralized network. Unlike centralized networks, the distributed network model does not allow for a single central entity to remove infringing content from the network, but rather requires every node hosting the infringing content to independently remove the content, which could be impossible to accomplish.

In order to combat these difficulties, the need for a blockchain-based registry of copyrighted works that compares content sought to be uploaded to distributed network sites prior to upload is quite apparent. Even if blockchain-based social networks never surpass the traditional centralized platforms, the use of a blockchain registry could still potentially be applicable and may be able to greatly increase the efficiency of stopping copyright infringement.

Deepfakes Are Taking Over Social Media: Can The Law Keep Up? 

By Kavyasri Nagumotu, J.D. ‘22

Public figures are being subject to deepfakes portraying artificially created circumstances that never actually occurred. Digital impersonation is becoming increasingly realistic and convincing. Online platforms such as Facebook, Twitter, and YouTube are fueling the rapid and widespread diffusion of user-created deepfakes. Intellectual property doctrines and recent “fake news” rules are unable to handle published deepfakes. The current Section 230 of the Communications Decency Act completely shields online platforms from the liability of publishing users’ deepfakes. The online platforms, controlled by a few private companies, are essentially governing the large parts of the digital world, leading to a crisis of legitimacy.

Technological and legal solutions are necessary to deter deepfakes that are primarily used to spread misinformation. As of now, the only possible ramification for public figures is to use property or tort law to claim civil liability against the individual deepfake creators. However, civil liability cannot ameliorate the harms because plaintiffs are not always able to identify the deepfake creator, and the creators can be located beyond the effective reach of the U.S. legal process. Since online platforms play a key role in enabling the distribution of deepfakes, a more effective approach would be to shift the focus and impose liability on the platforms. A discussion of First Amendment rights will remain in the background for these claims, and the courts must decide how to balance free speech rights with the societal harm that deepfakes cause. While we wait for legal mechanisms to potentially fall into place, the technology of deepfakes is only going to improve, causing chaos. We need to discuss the harms of deepfakes and possible solutions to prevent the spread of misinformation now.

TC Heartland: Still Waiting for the Other Shoe to Drop

By Katarina Overberg, J.D. ‘22

Venue location for civil suits are governed by Congress through a general venue statute and specialized venue statutes; 28 U.S.C.A. § 1400 is the specialized venue statute that governs patent infringement suits. In 1957 the Supreme Court held in Fourco that Congress intended § 1400(b) to be a standalone statute and not supplanted or modified by the general venue statute, § 1391. In 1990 the Federal Circuit came to a different conclusion in VE Holding. Congress amended § 1391 in 1988 to “provide that ‘[f]or purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.’” The Federal Circuit reasoned Fourco was effectively overruled by the 1988 amendment and no longer the applicable law. In VE Holding, the Court held § 1391 supplanted § 1400. This holding broadened venue jurisdiction for patent infringement cases and greatly changed the landscape of patent venue. A resulting concentration of patent infringement suits occurred in the Eastern District of Texas and led to a much debated phenomenon known as “forum shopping.” After roughly 25 years of the Federal Circuit administering patent venue rules based on this holding, the Supreme Court overruled them in TC Heartland.

In 2011 Congress amended § 1391 again setting the stage for TC Heartland to be brought to the Supreme Court. There were two changes that were key to the Supreme Court’s reasoning. “For purposes of venue under this chapter” was changed to “[f]or all venue purposes.” Additionally, a savings clause was added stating § 1391 governs venue of all civil actions “[e]xcept as otherwise provided by law.”

In 2014 Kraft Foods, incorporated in Delaware, brought a patent infringement suit against TC Heartland, incorporated in Indiana, in the District Court for the District of Delaware. The District Court denied TC Heartland’s petition for change of venue, and the Federal Circuit denied their petition for a writ of mandamus, both relying on Federal Circuit precedent. The core issue in TC Heartland was whether the patent venue statute language incorporated the broader definition of “residence” employed in the general venue statute. The Supreme Court held it did not, reasserting its Fourco holding that venue for patent infringement cases is exclusively controlled by the patent venue statute.

The Supreme Court addressed the question of whether the amendments to § 1391 changed § 1400(b)’s meaning. The Court reasoned that the current version’s saving clause further undermines the argument that § 1391(c) supplants § 1400(b). The Court concluded the exception language makes “explicit the qualification that the Fourco Court found implicit in the statute;” thus permitting specialized venue statues to contain independent definitions of “resides.” The largest blow the Court administered to the CAFC was their conclusion there was no indication Congress ratified VE Holding in the 2011 version as it deleted the phrase “[f]or purposes of venue under this chapter,” which VE Holdingheavily relied on in its statutory interpretation. Since the Supreme Court reasoned that the Federal Circuit’s holding in VE Holding was incorrect and Fourco is the controlling interpretation, the question on everyone’s mind is: are the days of infringement suits being brought in plaintiff-friendly Eastern District of Texas over?

In the immediate aftermath of TC Heartland patent infringement suits in the Eastern District of Texas dropped by a little over half its normal docket. On the other hand, in the District of Delaware, patent infringement suits nearly doubled. Nonetheless, the long-term implications of the case are still uncertain. While it is not as easy to file in the plaintiff’s jurisdiction of choice, it is not necessarily impossible.

An issue not fully resolved is the meaning of “a regular and established place of business” for the purposes of venue. E-commerce particularly presents a challenge in defining where companies have a regular and established place of business. How much of a physical presence by the defendant is necessary to establish patent venue is yet to be decided. This undecided issue has surfaced in cases such as In re Google LLC, No. 2018-152. Depending on how the Federal Circuit interprets the language, patent venue may yet again become another issue ripe for the Supreme Court to weigh in on. TC Heartland might be viewed as a pointless debate of semantics if § 1400(b) is interpreted to be as broad as § 1391(c). Nonetheless, just how narrow and what factors a court should consider to support a finding of proper venue is an important distinction which the CAFC must make eventually.

The Ongoing CRISPR Patent Dispute

By Yiling Sun, J.D. ‘22

Many diseases are caused by protein deficiency, which is due to errors in DNA. Therefore, the ability to edit genes becomes an incredibly powerful tool for both research and treatment of diseases. In the late 1980s, CRISPR was discovered by Japanese scientists. However, its potential use has not been recognized and generally accepted until Jennifer Doundna and Emmanuelle Charpentier published a collaborative paper proposing that the CRISPR/Cas9 complex could be used for programmable editing genomes, which is now considered one of the most significant discoveries in the history of biology. Both of them also were jointly awarded the Nobel Prize in Chemistry 2020 for discovering one of gene technology’s sharpest tools: the CRISPR/Cas9 genetic scissors. It was found that by changing the sequence of the RNA in the CRISPR/Cas9 complex, the entire complex could be customized to target virtually any part of a genome containing a corresponding sequence. The potential applications and the corresponding commercial value of CRISPR are enormous. Whoever owns the intellectual property rights of CRISPR is going to be very rich.

The dispute over ownership of the associated patents between the University of California (UC) and the Broad Institute (Broad) has been for a number of years. In 2012, Jennifer Doudna from UC, with others, published a paper on CRISPR showing that this gene-editing tool can be used to cut DNA in a test tube at targeted sites, and later filed a patent application for CRISPR. In 2013, Feng Zhang from Broad reported that a CRISPR system could edit genomes in the living cells of mice and humans and filed his own patent application for the PTO to “fast track” its patent review process. Therefore, although UC filed first, the PTO actually awarded the patent to the Broad in April 2014. UC then asked for an interference proceeding to determine who was the first to invent the gene-editing tool CRISPR-Cas9. The PTAB confirmed that the Broad’s innovations were distinctly patentable subject matter from the UC patent filings. This decision was upheld by the U.S. Court of Appeals for the Federal Circuit in September 2018. However, in 2019, the PTAB restarted the dispute by declaring a new patent interference in relation to CRISPR patents belonging to the two parties.

The legal issue now becomes whether the Broad’s patent is obvious from the UC’s patent and what standard should be used to make that determination. In this note, I discuss the obviousness standard adopted by the courts and other new factors to be considered for this case. Also, I discuss the patentability of CRISPR gene-editing tool from the perspectives of statutory limitations, morality concerns, and other balancing factors.

Scents as Trademarks: Practical Tips for Future Applicants in a Developing Field

By Eleanor Walker, J.D. ‘22

Like more traditional marks, scents and smells can be eligible for federal trademark protection and registration if they satisfy the statutory requirements of the Lanham Act. Their legal protection is fundamentally based in Section 45 of the Act, not because they are explicitly mentioned, but because they are not explicitly excluded. Therefore, it is worth noting that, even though certain scents can function as trademarks, few have been successfully registered. It was not until 1990 that the first scent was granted federal registration, and since then, less than 20 other scents have been added to the registry.

Examining both successful and failed attempts by applicants to get their scents registered has revealed that there are several common reasons why applications for scents are denied by the USPTO. These include the inability to prove acquired distinctiveness, failure to function as a trademark, alleged functionality, lack of information specifying that the mark is not disqualifying, and inadequate descriptions. These are all common enough bars and hurdles that any type of trademark applicant may encounter. However, the small number of successful scent registrations begs the question of whether applicants for scent trademarks are under-prepared or ill-informed on how to prepare a successful application, or if the USPTO examiners are playing a role as well. Of course, evaluating these applications has also shown that, because of their functionality, some types of scents can never be eligible for protection, regardless of how an application is amended or what evidence is provided.

With the recent successful registration of the Play Doh scent, we may be entering a new era of scents as trademarks. Perhaps the notoriety of that triumph will translate into more applicants attempting to register their own scents, and, as a result, the field of scent trademarks and our understanding of them will expand. However, for that to happen, applicants need to have a better idea of what is standing in their way, especially if they have fewer resources than companies like Hasbro. In my note, I will endeavor to offer insights to these applicants, so that, first, they will not be intimidated by the lack of prior success; second, they can reduce unnecessary back and forth with the USPTO; and third, those with blatantly ineligible scents do not waste their time or resources.