As we have discussed previously, trademark protection isn’t an exclusive club for words and pictures. Shapes, sounds, and even the tactile feel of a product can all qualify for trademark protection. And as a recent application from Hasbro shows, even the smell of a trademark might qualify for trademark protection.
The mark set forth in the application is technically the standard character mark “NON-VISUAL PLAY-DOH SCENT MARK.” After an amendment or a refiling though, Hasbro will provide a more detailed description of the mark. Hasbro did provide a miscellaneous statement that describes the scent in more detail 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.
Scent marks are not unheard of, but can be difficult to successfully register. Legend has it that the first scent mark was registered in 1990, following an appeal to the Trademark Trial and Appeal Board. The mark was described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used for sewing thread and embroidery yarn (Reg. No. 1,639,128). In re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990).
Like other non-traditional trademarks, registration of a scent mark imposes additional hurdles. A scent mark cannot be inherently distinctive and therefore the Applicant must establish that the mark has acquired distinctiveness, as set forth in the Trademark Manual of Examining Procedure 1202.13. Also, the claimed mark cannot be functional. Accordingly, if the smell is the natural result of a manufacturing process or provides non-reputational related advantages over competitive products, then the mark is likely functional and non-registrable.
Other scent marks have been registered, but not many are on the Principal Register. One company owns a registration for a “bubble gum” scent mark for shoes and flip flops (don’t ask me why). Another entity owns a registration for a cherry scent for automobile lubricants. There are many more scent marks that could not clear the acquired distinctiveness hurdle, but were not deemed functional so were eligible for registration on the Principal Register. This would include Verizon’s “flowery musk scent” for its retail stores or another company’s strawberry-scented toothbrushes.
Will Hasbro will be able to overcome the functionality hurdle? Presumably some of the ingredients are included in order to get the right consistency. However it seems less likely that the cherry and vanilla fragrances are necessary, so my best guess is that functionality won’t prevent registration. Acquired distinctiveness is the bigger hurdle for scent marks, but I can already imagine the smell of Play-Doh just by thinking about it. The mark certainly has recognition. However to be completely honest, I never noticed the “vanilla” or “cherry” overtones. But maybe my toy clay palate isn’t sufficiently advanced to pick up on those notes.