Can I legally use another company's scent in our products? 11 Answers as of June 19, 2013

I own a soft plastic lure company. We produce soft plastic lures with all our own raw materials. We want to change our scent to an outside company. Are we legally allowed to use it to add to our products after we manufacture them? If we are do we have to show that we use their product to scent ours on our packaging? Or do we not have to say we use their product. Lastly if we do not have to advertise that we use their product can we list on our packaging that the scent we use has qualities that they (other company) advertise?

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Gerald Walsh | Gerald Walsh
If you purchase the scent in the ordinary stream of commerce you can use it for any purpose. You do not need to disclose it and you can describe its properties. If the scent is protected by a patent then you may not be able to make the scent yourself without a license from the patent owner.
Answer Applies to: Alabama
Replied: 6/19/2013
Banner & Witcoff, Ltd. | Ernie Linek
If you purchase the scent from the maker (or a reseller) - you then have the right to use it in your product. You may keep as a "trade secret" the exact scent that you use. You can describe it as having an XXX scent - as long as that description is accurate.
Answer Applies to: Massachusetts
Replied: 6/4/2013
Law Office of Mathew R. P. Perrone, Jr. | Mathew Roy Patrick Perrone, Jr.
These questions cannot be answered this way. The information is not complete. You need to talk to a patent attorney.
Answer Applies to: Illinois
Replied: 5/24/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
When you buy the other company's scent you can do with it what you want. You need not advertise that you are using their scent. if you just advertise the same effects as they do - you had better make sure you can back up what you advertise. IE if they say it will cure asthma, you can only say that yours will cure asthma if you can back it up. Don't rely on what another states as the truth. Investigate yourself. It is no defense to say "But i advertised that because my components packaging said that it would."
Answer Applies to: Oregon
Replied: 5/22/2013
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
This would not be legal. Use of the scent of another company for your products without permission would constitute "reverse passing off" in violation of trademark law. Further, you might also be violating this other company's patents and trade secrets by using their scents in your product without permission. In addition, federal and local regulatory requirements probably would require that you include the identity of the manufacturer of the scent in your product labelingthe labeling issue would have to be reviewed by regulatory counsel, and may involve regulations of the FDA, FTC and state and local regulations. You also cannot use this other company's name in your packaging without its permission. More fundamentally, this question reveals a profound lack of understanding of our intellectual property laws. If you produce soft plastic lures, you need to educate yourself on the basics of IP law, because my guess is that you may have many other problems under U.S. IP law that could get you into deep trouble. Your company needs to build a relationship with intellectual property counsel because otherwise my guess is that someday soon you will face a very expensive and financially disastrous law suit.
Answer Applies to: New York
Replied: 5/22/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    You won't be able to use the scent if the other company has any claim on the material that causes the scent (such patent or trade secret protection). If the material was patented and the term of protection has ended, you can use the scent and you don't have to note the source of the scent on either packaging or advertising. But be careful of comparing your product to someone else's as you may be required to prove that they are the same or similar..
    Answer Applies to: Nebraska
    Replied: 5/22/2013
    Microtechnology Law & Analysis | Daniel Flamm
    Wow, those are good questions and you would do well to hire an attorney to do the legal research necessary to provide a legal opinion with thorough answers to each of them. Here is an initial response. First, if you purchase the scent you are entitled to use it for all legal purposes. That would include the ordinary purpose of adding it to your product for its intended purpose (e.g. as a scent). (If the seller/manufacturer has a patent, a principle known as patent exhaustion applies). Whether you must list their product on the packaging depends on other things (i.e.. the intended use/purpose of your product - food? drug? controlled substance? whether subject to FDA. EPA regulations etc.) which are beyond the scope of this reply. Your question about listing the ingredient(s) is oversimplified. If you mean listing its chemical components, that depends on the use (i.e. regulations requiring listing, such as food additive, EPA, etc.). You are always entitled to list chemical ingredients if you choose to and obtained the compositional information independently without any legal obligation(s). If you want to list the chemical constituents and don't know what they are, I'd suggest to perform a chemical analysis (e.g. gas chromatography/mass spectrometry etc.). You are entitled to do these things even if the formula is protected by trade secret laws or the combination is patented.. You are not entitled to use their Trademarks, if any, without their express consent. Accordingly, if you want to include another company's trademarked name (i.e. "Coke (TM)") on your packaging, you must first obtain their permission (e.g. a license or other form of consent). Finally, the sale and/or consent by the maker company, without more, does not give you any rights to use patents or trademarks that the maker company itself has no rights or license to use (e.g. the contemplated use or a marking may conceivably infringe a third party's patent or trademark). Please be aware that remarks are initial impressions and must not be relied on as any legal advice. Usually, the devil is in the details.
    Answer Applies to: California
    Replied: 5/22/2013
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    If you purchase the scent then you should be fine. If you re-create the scent then you may be infringing on the mixture. If you purchase their scent you do not have a duty to notify others where the scent was made. Purchasing the scent ensures that you have paid for any intellectual property to create the scent and you can uses the scent as desired without advertising. For human consumable products you may need to identify the ingredients.
    Answer Applies to: California
    Replied: 5/22/2013
    DANIEL NESBITT
    DANIEL NESBITT | Hasse & Nesbitt
    This is not a question about the patent law or practice, but a request for specific legal services. You should have to engage the services of an attorney to thoroughly analyze the facts and issues.
    Answer Applies to: Ohio
    Replied: 5/22/2013
    Tran & Associates | Bao Tran
    You are free to buy the scent and apply to your lure and you don't have to say that you use their product. You certainly can list on the packaging the attributes/quality of your product as long as it is truthful. You should get patent application as soon as you can to prevent others from copying you.
    Answer Applies to: California
    Replied: 5/22/2013
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