On Friday, May 19th, Hasbro announced that the characteristic scent of their well-known Play-Doh product has been officially recognized by the United States Patent and Trademark Office as a registered trademark of the brand. This presents a major step forward in the evolution of “scent trademarks”, with Hasbro being by far the largest corporation to obtain one since America started allowing such trademarks in 1990. While Hasbro is not the first to obtain a scent trademark, they are a large company who has just brought attention to a niche area of intellectual property law with a lot of potential.
The company was initially unsuccessful in obtaining the trademark: the trademark examiner rejected Hasbro’s first filing on May 26, 2017, on the grounds that scented dough lacked distinctiveness (most similar products are also scented). Hasbro successfully appealed the decision, and Play-Doh’s distinctive “sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough” is now a protected American trademark, preventing other moulding dough companies from using the scent on their own products.
There are many complications involved with scent trademarking, including the subjective nature of smell, the temporality of scents themselves, the difficulty in making the existence of a scent trademark known to consumers, and the possibility of exhausting all available scents. However, the benefits of tying a specific scent to your product are numerous, as they allow you to leave a mark on consumers through multiple senses at once. Hasbro themselves have mentioned the benefits of scent trademarking, as stated by Jonathan Berkowitz, senior vice president of Global Marketing for Play-Doh: “By officially trademarking the iconic scent, we are able to protect an invaluable point of connection between the brand and fans for years to come”.
As American law currently stands, in order to trademark a scent, a “substantial threshold” must be met. This has historically been quite difficult for companies to achieve, as applicants must prove that their product’s scent is both nonfunctional and distinctive, in order to receive full trademark protection.
“Nonfunctional” in this context stipulates that the trademark cannot cover aspects “essential to the use or purpose of the article”. As a result, Verizon can trademark the smell of their marquees, but Chanel cannot do the same for their perfumes . The scent must be essentially arbitrary to the purpose of the product, just as Play-Doh’s scent is arbitrary to its function as moulding dough. If a company can show that their product’s scent is nonfunctional, then it can be added to the supplemental trademark register, and gain limited legal protection (as nine companies have reportedly done to date.)
In order to register a scent as a trademark (and not merely be protected under the common law principle of passing off), companies must show that their product’s scent is distinctive. This is no easy task and, before Play-Doh, only three products have reportedly satisfied the test. To prove that a product’s scent is distinctive per the USPTO “you have to prove that the smell in question is not just distinctive, but that it is so distinctive that it has come to be associated with your particular product.” Passing this stage of the test is what made the Play-Doh decision newsworthy, and required Hasbro to present significant evidence. In Hasbro’s own words: “Since the PLAY-DOH brand’s inception in 1956, the distinctive smell has consistently served as a hallmark of the brand, and after more than six decades providing children with a source of imaginative and creative play, the scent has become increasingly recognizable among children, parents and grandparents alike.”
Awarding a trademark to Play-Doh shows a departure from the original rationale behind scent trademarking. While the original scent trademark was given to OSEWEZ thread, in part because they were the only company manufacturing scented thread, it has been acknowledged by the trademark board itself that Play-Doh is far from the only toy putty company that scents its product. As Play-Doh’s original scent trademark rejection stated, “when purchasers are confronted by the scent of applicant’s goods, they are likely to perceive it as an incidental feature of the goods rather than perceiving it as a source indicator.” In now giving Play-Doh’s scent a trademark designation, they are saying that the specific scent can be a source indicator, not just an incidental feature of the product. This would suggest that the distinctiveness designation could be moving away from the standard of scenting a product in general, towards the standard of giving a specific scent to a product.
While scent trademarks are very much in their infancy, existent through only sparse case law, Hasbro’s actions and publicity will certainly bring these trademarks a large amount of attention, and allow for the development of some often vague laws. This may prove to be the catalyst that could bring a valuable marketing tool the protections it deserves.
Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.
