Can’t You Smell That Smell

March, 21st, 2017

Categories: Articles, Blog Tags: trademark, USPTO

By Christina L. Winsor

Can a nostalgic childhood scent be a trademark? Hasbro, Inc. certainly seems to think so. On February 14, 2017, the multinational toy and board game company filed a US trademark application for the scent of its famous PLAY-DOH, Serial No. 87335817. Hasbro applied for the mark in international class 28 for “toy modeling compounds,” describing the scent as “[a] unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.”

While Hasbro is claiming that its scent already functions as a trademark through its acquired distinctiveness from over 60 years of use and its millions in product sales, scents may be one of the hardest, non-traditional trademarks to obtain and there are only about a dozen that exist (most on the Supplemental Register). One of the toughest hurdles to overcome in obtaining a scent trademark registration is functionality. Trademark law specifically prevents registration and protection of marks that are functional. Scents arguably function to cover-up another smell or are created simply from the manufacturing process. This is the main reason why the scent of perfumes cannot be protected under trademark law. Companies like Verizon Wireless Inc. have applied for trademarks registrations on the scents they pump through their retail stores. Yet, Verizon only received a supplemental registration, Reg. No. 4618936, because according to the examiner, other companies “commonly use scents to create ambiance in stores.”

Another obstacle to overcome is the difficulty in proving that consumers connect the smell to the brand so that it acts as a source identifier. The evidence needed to prove acquired distinctiveness and to show that the scent is not merely a descriptive feature of the product is substantial. However, I’m quite certain if you put a blindfold on my two-year-old daughter, put a container of PLAY-DOH in front of her and asked what she smells, she’d answer correctly. So, this may not be such an obstacle after all!

Other foreseeable hurdles include describing the scent objectively in the trademark application, providing a proper, lasting specimen to the USPTO, the difficulty for third parties to conduct clearance searches for scent marks, and very importantly, the ability to enforce the mark. But Hasbro is confident that its “PLAY-DOH scent is one of the best-known, most unique and instantly recognizable scent trademarks in the world…and has been serving as a trademark for decades. A federal registration will reinforce Hasbro’s existing common law trademark rights in the iconic PLAY-DOH scent,” said Catherine M.C. Farrelly, the lawyer that filed Hasbro’s application, in a recent published article.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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