May 23, 2018

The Look, Feel and Smell of Trademark

By Joel R. Samuels, Associate

On May 15, 2018, Hasbro obtained another trademark registration. This fact alone is not surprising. After all, Hasbro owns over 5,500 registered trademarks. What makes U.S. Reg. No. 5,467,089 unique is what it covers: the particular smell of Play-doh brand modeling compound.

One may ask, does smell matter? According to Hasbro, yes it does. Hasbro’s Vice President, Global Brand Strategy and Marketing, declared “Without the additive, the scent of Applicant’s Play-Doh modeling compound is bland and flat.” But, it’s not just any smell, it’s the unique “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.”

During prosecution the examining attorney cited several scented modeling compounds. Hasbro successfully contended Play-Doh’s unique scent was not similar to modeling compounds which smell like “watermelon, orange, banana, lime, pear, pineapple” or “grape, cherry, lemon, apple, blueberry” or “cake, butterscotch, toffee candy, donut, cupcake” or “sour apple, pineapple, punch, orange sherbet, blueberry blast, grape bubblegum, cherry berry” or “grapes, watermelon, bananas, blueberries, apple and strawberries” or “fruit punch or tangelo.”

Attuned readers will note that the ‘089 registration is based on a 2(f) claim of acquired distinctiveness, dating from September 12, 1955. Hasbro supports its claim with several declarations and over 340 articles, advertisements, testimonials and pictures. Notably, Hasbro highlighted its “Stop and Smell the Play-Doh campaign” as well as articles professing “the wonderful Play-Doh smell” which is “impregnated in your mind” and that the “scent of Play-Doh modeling compound is ‘as identifiable to many consumers as their mothers’ faces.”

A couple of other facts from the prosecution file:

  • Despite coming in various colors, all Play-Doh modeling compound smells the same (“the applied-for goods come in various colors, including white, and all colors of the applied-for goods have the same distinct scent.”
  • According to Hasbro, if you were to make “a big ball out of all of the Play-Doh compound ever created, it would weigh more than 950 million pounds.
  • Play-Doh’s unique smell does not have any functional aspects or advantages except “to convey to consumers that the modeling compound is Play-Doh brand modeling compound, produced by Applicant.”
  • What did Hasbro submit as a specimen? A can of Play-Doh, of course.