Intellectual Property, Trademarks

A Nose For Trouble? Registering Scents Under Trademark Law

Hasbro 'smells' an opportunity to further broaden its intellectual property rights for Play-Doh®.

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Who doesn’t love Play-Doh®?  From its doughy texture to its vibrant colors, kids the world over have come to love playing with this children’s product. Moldable and extrudable, this modeling clay has excited children’s’ imaginations, spurring countless creations from pretend cookies to molded dinosaurs on kitchens tables everywhere.  With such a strong product following, it is no wonder that the Play-Doh® trademark has become a valuable piece of intellectual property for its owner, Hasbro, Inc.  In fact, Hasbro has enjoyed double-digit revenue growth for Play-Doh® sales in recent years, including a 32% increase in 2015 alone.  Perhaps that very success spurred Hasbro to expand the scope of intellectual property protection for this product by filing  a use-based trademark application for the smell of its Play-Doh® product this year, kicking up a bit of a stink in the process.

A trademark is most often expressed as words, a logo, or some combination of the two, but scents can qualify as trademarks as well.  Section 1202.13 of the Trademark Manual of Examining Procedure (“TMEP”) specifically states that “[t]he scent of a product may be registrable if it is used in a nonfunctional manner.”  In fact, certain smells have been registered in the U.S. since 1990, such as the scent of plumeria blossoms for sewing thread and embroidery yarn, as well as the “flower blossom scent” in Verizon Wireless stores. This may seem peculiar, but don’t laugh — Hasbro describes the scent Play-Doh® in its federal trademark application the way a sommelier would describe the “notes” of a fine wine — 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.”  I don’t recall any cherry overtones in my Play-Doh® as a kid (and will admit to taking a whiff of some I found from my kids’ old stash just to make sure I wasn’t missing something), but the detail conveys a distinct point — the scent must be non-functional and distinctive.

Although you can obtain federal trademark registration for a scent, whether you should get one must be carefully considered before moving forward. Getting a federal registration for such “non-conventional” trademarks is a very uphill battle, and the TMEP confirms as much by stressing that “[t]he amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.”  When you think about it, the difficulty makes complete sense.  The functionality doctrine under trademark law is designed to prevent manufacturers from protecting features of products with trademarks (so as to not inhibit legitimate competition), so to the extent the scent is used in a functional manner, it cannot be protected.  Remember: Utilitarian features of a product can only be protected under patent law, and a integral point of the functionality doctrine is to maintain this line in the sand.  For example, the actual scent of a designer fragrance would not qualify for trademark protection because the feature of the product (its smell) is the essential point of the product — in other words, the fragrance is essential to the product’s use or purpose.

Further, trademarks cannot be descriptive — to the extent the scent exhibits a quality or ingredient of the goods to which the mark applies, it will not quality for federal trademark protection unless the applicant can provide sufficient evidence that the mark has acquired distinctiveness.  Mere descriptiveness is a fundamental aspect of trademark law, and for good reason — descriptive terms (especially generic ones) fail to perform as trademarks because they fail to denote the source of the goods.  For example, the term “TOOTHPASTE” may help convey what the product is, but not whose it is. Proof of acquired distinctiveness must be shown, or the trademark will not register.

I applaud Hasbro’s effort to federally register the Play-Doh® smell as a trademark — the product is considered iconic in the toy industry, and Hasbro “smells” an opportunity to further broaden its intellectual property rights as a result.  That said, trademark owners should proceed with caution when considering registering smells as trademarks — the functionality and distinctiveness requirements are not insubstantial hurdles to overcome.  For those who are sniffing around this area of trademark law, take heed of the following points:

  1. Scent Trademarks Are Not For Everybody. As aforementioned, scent trademarks are non-conventional trademarks, and federal applications for registration of such trademarks require specific steps in preparation and prosecution.  Most scents will simply not qualify, and obtaining federal registration will take finesse and substantial evidence.  The fact that you may consider the scent to be a trademark is a first step — the counsel of qualified intellectual property counsel in these circumstances a must.
  2. If It Smells Like a Function, It Probably Is One.  Functionality is the death knell for scents seeking trademark protection, let alone protection in the USPTO.  Where there is any question as to functionality, there is usually functionality to be found.  The scent may be unique, but if that smell has a function in the product, it simply will not qualify for trademark protection
  3.  You May Think It is Distinctive, But It’s What Others Think That Matters.  Distinctiveness is required of all trademarks (whether inherent or acquired). With scents, such distinctiveness is normally acquired over time (and in many cases, a long time).  You may think that the smell is distinctive, but it’s the consumers of the product or service connected to the scent who make that determination.  Before you consider trying to obtain such protection, go through the process of determining if your consumers identify with the scent as much (or more) than you do.

As you can see, scent trademarks present an interesting opportunity to the trademark owner, but they are not for everybody.  Personally, I think Hasbro makes a decent case for obtaining federal trademark protection for the smell of Play-Doh® — it is a distinctive scent that has nothing to do with the function of the product (even if I can’t smell the “slight overtones of cherry”). Further, it has been in the marketplace so long even the “salted, wheat-based dough” elements of the scent work with the other elements to present a smell that has acquired distinctiveness in the minds of consumers with which can identify.  Before you go and file to federally register a scent trademark, however, make sure you work through the functionality and distinctiveness issues first — regardless of the outcome, something tells me that you may enjoy the “sweet smell of success” in the process.

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Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at [email protected].

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