Trademark attorneys usually handle registrations online. But the lawyer for toy maker Hasbro Inc. faced a problem that no computer could solve.
Lawyer Catherine M.C. Farrelly was trying to get a trademark registration for the iconic scent of Play-Doh, the modeling compound that has been sold as a children’s toy since 1956. The Patent and Trademark Office requires a specimen of any trademark, so the scent had to be sent. Farrelly, of Frankfurt, Kurnit, Klein & Selz PC, New York, told Bloomberg Law that she sent the application in February 2017 with a note that a box of Play-Doh was on its way by overnight delivery.
Hasbro Inc.’s success in getting a trademark registration in May 2018 for the smell of Play-Doh might serve as a model for lawyers tasked with securing aroma-related trademarks, trademark lawyers told Bloomberg Law.
Non-traditional trademark registrations make up a small portion of the approximately 2.2 million active registrations the PTO maintains Colors, such as combinations of green and yellow on farming vehicles, can be a non-traditional trademark. A company also can try to register an aural trademark, like NBC’s three-note chime. Of all non-traditional trademarks, scents are the rarest.
The extensive record in the Hasbro proceeding illustrates exactly what evidence an applicant needs to register a scent as a trademark.
The documents in the Play-Doh docket “really do set a road map to applying for a fragrance trademark, because they ask for all kinds of information about whether this fragrance has any functional feature to it,” according to Jeremy Richardson, a children’s products specialist at Michelman & Robinson LLP, New York. “So if I were applying for a fragrance trademark, I would look at this list of questions and try to predict what other questions the examining attorney might ask.”
The Patent and Trademark Office’s database includes only a handful of active registrations that include the word “scent,” including a bubble gum scent for footwear, a chocolate scent for jewelry, and a “flowery musk scent” for Cellco Partnership’s Verizon retail stores, a Bloomberg Law analysis of the database shows.
Now on that exclusive list: the “sweet, slightly musky, vanilla fragrance” of Play-Doh.
Changing ‘no’ to ‘yes’
The most important document for trademark lawyers, according to Richardson, is a May 2017 letter from the Patent and Trademark Office. The agency refused Hasbro’s application but included a set of questions that, if answered correctly, could change the “no” into a “yes.”
The trademark examiner focused on whether the scent had any functionality or utility—a deal-breaker for trademarks, because a brand owner can’t use its trademark rights to stop competitors from copying a useful feature.
Scent trademarks—like all trademarks—must be non-functional. That’s a big reason why they’re so rare. Distinctive scents often have a function, such as the smell of food or the aroma of perfume.
To be non-functional, the scent must not be “essential to the use or purpose of the product or affect the cost or quality,” Kathleen E. McCarthy, an intellectual property lawyer with King & Spalding LLP, New York told Bloomberg Law. She said a scent can fail the test if the product naturally has an aroma caused by production that would take effort to remove.
“Many trademark applicants in the past have failed to make this showing because their purported evidence related to the underlying product, rather than to the scent itself,” William W. Stroever, who co-chairs the intellectual property practice at Cole Schotz PC, Hackensack, N.J., told Bloomberg Law.
Hasbro had to calm the agency’s concerns about whether it had ever claimed the scent was useful. Several questions asked whether the substance or process of adding the scent to Play-Doh enhanced any other features, such as keeping the Play-Doh moist, giving it a better texture, or making it easier to mold or color. Hasbro’s response successfully persuaded the examiner that the scent had neither function nor utility that enhanced Play-Doh’s features.
A future applicant can use this list of concerns to anticipate what kind of evidence the agency would ask for to prove non-functionality, Richardson said.
The documents also show how much easier it was for Hasbro to prove trademark rights compared to the hurdles other applicants would face.
Hasbro was in a rare position of having decades of evidence to demonstrate that consumers recognized the scent as belonging to Play-Doh. The company submitted articles from independent sources describing the distinctiveness of the toy’s aroma.
Most companies trying to claim a scent as a trademark won’t have that kind of evidence readily available, Marsha K. Hoover, head of the intellectual property practice at Goldberg Kohn Ltd., Chicago, told Bloomberg Law. They might have to generate evidence of consumer perception, such as by conducting surveys.
The trademark office often will shelve a scent trademark application on its Supplemental Register, Joel R. Samuels of Harness, Dickey & Pierce PLC, St. Louis, told Bloomberg Law. The registration will sit on the register for at least five years while the company builds up proof that consumers really do perceive the scent as a trademark for the product.
Hoover said most companies will need to plan ahead, by highlighting the scent in its advertising, but taking care not to claim that the scent enhances the product.
“In a normal situation in which a client is trying to exercise dominion over a color or a scent or a sound, they are well off to focus on that aspect in their advertising if they can,” Hoover said. That kind of advertising can be described as “look for” advertising, as in “look for the” particular color, for example, “and you’ll know you’re getting the best product.”
Scent mark registrations face additional hurdles, Samuels said. It can be difficult to describe in words what exact smell the company wants to claim as its own, for example. It can be difficult to determine when two scents are similar and when they aren’t when suing another company for infringing a scent trademark.
Trademarks don’t have to be registered to be enforced. But Christine B. Redfield, a brand protection lawyer with Fenwick & West LLP, Mountain View, Calif., told Bloomberg Law that the hurdles facing a scent mark owner are already so high that registration is a good idea.
“If a company is serious about protecting its rights in a scent, it should seek registration, just to get confirmation from the trademark office that it is entitled,” Redfield said.