The recent registration of Play-Doh’s scent trademark is continuing to make waves among trademark lawyers and consumer brands. St. Louis trademark attorney Joel Samuels weighed in with his thoughts on the matter in a new article from Bloomberg Law.
Play-Doh, which is owned by Hasbro, Inc., has been in production since 1956. Despite being a childhood staple for more than sixty years, the company was unable to register a scent trademark for the familiar, salty-doughy smelling toy until May 2018.
This may be due in part to the fact that non-traditional trademarks (colors, short audio jingles, and scents) make up only a very small portion of the 2.2 million trademarks currently active and maintained at the USPTO. Of the small number of non-traditional trademarks, furthermore, scent trademarks are by far the rarest.
Following the example of Play-Doh’s registration, however, may be an effective strategy to push the number of scent trademarks higher in the coming years, especially because the record shows exactly which evidence to use.
The main item of focus will be on utility, or rather, the lack thereof. Companies will need to prove that the scent or scent ingredients do not offer any utility or enhanced feature for the product. In the case of Play-Doh, the ingredients do not help retain moisture or make it easier to mold, for example. The scent also cannot be the only purpose of the product, which is why perfumes are never awarded scent trademarks.
Attorneys will also want to pay attention to the evidence Hasbro submitted regarding consumer recognition. They leveraged their long history and exceptional consumer base to find articles that describe how distinctive their scent is.
Recognizing that newer companies do not have such powerful brand recognition, Samuels offered that “The USPTO will often shelve a scent trademark application on its Supplemental Register for at least five years. During this time, the company can build up proof that consumers really do perceive the scent as a trademark for the product.”
Samuels adds that “it can be difficult to describe in words what exact smell the company wants to claim as its own. It can be especially difficult to determine when two scents are similar and when they aren’t when suing another company for infringing a scent trademark.”
He suggests being as specific as possible and using a range of descriptors rather than simple phrases such as “smells like grapes.”