Since the mid-1950s, consumers of all ages have brought their imagination to life using the familiar putty-like substance to create objects and figures. Throughout the decades, Play-Doh has won the hearts and minds of children around the world, becoming a quintessential part of every toy box and earning a place in the National Toy Hall of Fame. Hasbro now wants to broaden its ownership of the iconic toy by expanding its intellectual property through the recent filing of a federal trademark application with the United State Trademark and Patent Office (USPTO) covering the scent of Play-Doh. Hasbro’s application provides a rare glimpse into how scent trademarks are filed and how difficult it is to acquire one of these marks.
One of the most important aspects of any business is its brand or trademark. Trademarks are shorthand for the goodwill and marketing message of any business. Trademarks distinguish products or services from those of competitors and serve as an indicator of the quality a consumer can expect. Of all of the senses, a trademark reliably protects two — sight and sound. For a trademark to be eligible for registration, the mark must first be used in conjunction with the sale or distribution of a product or service, and second must be able to identify the place of origin to consumers. Although scent trademarks are not explicitly enumerated in the statue, United States case law recognizes that a scent can function as a source identifier and therefore can and does function like a trademark.
The Trademark Manual of Examining Procedure (TMEP) provides some guidance on what an aroma needs to demonstrate before being registered, asserting that “the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” To overcome the “substantial” threshold, an applicant must satisfy two conditions by establishing that the mark is (1) nonfunctional and (2) distinctive. An aroma that meets both of these requirements is eligible for registration on the Principal Register under §2(f) of the Latham Act, or on the Supplemental Register if the scent is nonfunctional but has not yet acquired distinctiveness. Hasbro is hoping that the scent of Play-Doh can be a source identifier for its modeling compound in the noses of consumers.
While many have tried to register scents before, the actual winners of these olfactory prizes are few and far between. It wasn’t until 1990 that the USPTO issued its first scent trademark in the case of In re Clarke. Applicant Celia Clarke, doing business as Clarke’s Osewez, filed for a mark used in connection with her company’s signature sewing and embroidery yarn, which smelled of Plumeria blossoms. Celia described the mark as a “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms.” The mark was initially rejected by the examining attorney on the grounds that the applicant had failed to demonstrate that the scent distinguished the good from its competitors and therefore did not function as a trademark.
The applicant’s appeal rested on four key points: (1) “no other company has ever offered any scented embroidery yarn or thread”; (2) that the applicant has “placed advertisements stressing the fact that her company is the source of sweet-scented embroidery products”; (3) “the scent . . . is not a natural or inherent feature of the goods and does not provide any utilitarian advantage”; and (4) the “company has received a great number of favorable and positive responses to her unique product and that, to the best of her knowledge, customers, dealers and distributors throughout the embroidery field recognize [the] applicant as the source of scented embroidery yarn and thread.” In the end, Clarke was granted the very first scent trademark for her yarn, opening the door for the protection of olfactory marks on the principle register. As a result, however, the burden of proof needed to register these marks was set extremely high.
First, Hasbro must demonstrate to the USPTO that the mark is distinctive. Trademarks are only protectable to the extent that they are unique from other marks. Being distinct allows the claimant to associate a mark with its brand without confusing consumers with existing providers. To prove distinctiveness, Hasbro must show evidence that the scent serves as a source-identifier or that consumers have come to identify that scent with the company and its products/services.
Hasbro will have to demonstrate that the scent of its modeling-compound has acquired distinctiveness through its use. It is expensive to establish, and to prove secondary meaning or consumer recognition, but if Hasbro is able to do this the scent is eligible to be placed on the principle register. Proving that a scent mark is distinctive is more problematic than visual trademarks because scent marks are defined subjectively and are therefore open to interpretation. Evidence of acquired distinctiveness may either be direct, including consumer surveys, or indirect, including sales data, number of years the mark has been in use, and promotional materials.
The Lanham Act builds in an assumption that in most cases, use of a mark for five years or more will mean it has acquired distinctiveness. In more complicated cases, however, more is required. For instance, in 2007 Manhattan Oil, a car lubrication producer, filed for a scent mark used in conjunction with its signature internal combustion engine lubricant that smelled of grape. In claiming acquired distinctiveness, the applicant alleged that it: (1) “used the grape scent for at least five years prior to the filing date of the application”; (2) “annually sold at least 5,000 bottles of lubricants containing the grape sent during those five years”; and (3) “advertised the product in numerous catalogues, in sales literature and on the applicant’s website.” Despite this evidence, the examining attorney found the provided materials were insufficient in establishing acquired distinctiveness. In an Office Action letter, the examiner requested additional evidence and noted that: “(1) The mark, according to the declaration submitted, has been in use for less than 10 years. (2) The volume of sales is relatively low over a five year period. (3) The applicant has indicated that it advertises it goods in three publications but has not submitted advertising figures.” The application was subsequently deemed abandoned for failure to respond to the Office Action.
Second, Hasbro’s scent must prove to be nonfunctional. To fulfill this condition, the scent must not serve a utilitarian purpose, meaning that the scent cannot be “essential to the use or purpose of the article” and cannot affect “the cost or quality of the article.” Under this provision, products such as cologne, perfume, and household cleaning products are not eligible to register as a scent mark. Additionally, the USPTO will not register marks for scents that naturally occur as a result of a manufacturing process. Applications for these scents are denied because granting protection for such registrations would prohibit competitors from using essential manufacturing methods in the creation of competing goods. Known as the functionary doctrine, established in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., this standard was adopted to promote healthy competition in the marketplace, by preventing applicants from controlling a useful product feature. The Inwood decision provides the marketplace with a balance between trademark rights and the potential anti-competitive behavior that could stem from granting one entity what could become a perpetual monopoly over a single useful feature. Unlike copyright and patents that have term limits, trademark protection could last indefinitely so long as the mark is used in commerce. The Inwood decision established that if a feature is needed to compete, no single entity should be allowed to claim exclusive ownership of the feature.
Proof that a scent is nonfunctional remains the barrier that most scent mark applications struggle to overcome in their quest for registration. For example, in 2015, Flotek Industries Inc., a Texas based producer of hydraulic-fracturing products, sought to trademark their signature orange-scented fracking fluid that is used to extract gases trapped beneath the Earth’s surfaces. Designed to smell like fresh cut fruit, professionals within the industry associated the orange smell with Flotek’s product line. The USPTO ultimately rejected the registration of Flotek’s mark because it concluded that customers would prefer scented fracking products because the scent would mask the pervasive odor of oil and gas around fracking operations and thus served a purpose. The rejection of this application illustrates that the bar is so high for the registration of scents precisely because more often than not, the thing that gives the scent its distinctiveness is at the heart of the scent’s functionality.
Hasbro’s application struggled with both of these qualifications. Describing the scent like a sommelier, Hasbro specified that the aroma of its famous modeling-compound was “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.” Hasbro elected to file its trademark under section 2(f) of the Latham Act, claiming acquired distinctiveness based on five years’ use. The toy company alleges its first use in 1955 for a grand total of 62 years of use, far more than the paltry five years required under the statute. As for a specimen, Hasbro took the straightforward route and simply mailed a container of Play-Doh to the PTO for examiners to sniff for themselves.
Hasbro’s decision to admit at the outset that its scent mark is not inherently distinctive by seeking a section 2(f) designation is a strategic one. Unfortunately, so far, it does not appear to be working in Hasbro’s favor. The USPTO has issued an office action finding that the initial section 2(f) evidence of acquired distinctiveness — the mere claim of 62 years of use — is insufficient to meet the higher bar for “non-distinctive product design marks.” Hasbro will now need to submit additional evidence of acquired distinctiveness, including the cumbersome showings of product sales, advertising expenditures, and letters or affidavits from consumers or dealers specifically recognizing the scent as an indicator of the source of the product.
Perhaps more concerning for Hasbro, however, is that the office action also refused registration under Sections 1, 2, and 45 due to the USPTO’s opinion that the scent for a toy modeling compound is ubiquitous to modeling compounds and incidental to consumers, rather than a source indicator. In the USPTO’s opinion, while it is unusual to have scent-infused yarn, it is not so unusual to have a scented modeling compound.
All hope for Hasbro securing a registration is not lost, because the USPTO did extend the olive branch option to allow Hasbro to convert its application from one for the Principal Register to the Supplemental Register. A supplemental registration would not be a bad outcome. Hasbro would still get a “registration” that would entitle it to use the coveted ® — although the logistics of putting an ® on a scent is another question entirely — and it would still have a leg up in federal court. However, a Supplemental Registration would be a liability in one critically important respect. Hasbro would still be on the hook to prove in any litigation to enforce the registration that the scent mark has in fact acquired distinctiveness and is not incidental. Either alone is a large hurdle to overcome; tackling both is daunting.
Scientific research has persistently confirmed that among a person’s senses, the human nose can associate a variety of items with an odor and that catching a whiff of a scent can conjure up fond memories and invoke emotions closely linked with brand loyalty among other things. Consumers already struggle to make choices in a marketplace of ever-expanding variety and seldom digest the never-ending barrage of audio and visual marketing messages that they face daily. Using a less exploited sense such as smell offers company’s a unique marketing and advertising advantage that lowers consumers search costs and allows company’s to communicate all the valuable information that traditional trademarks do – product’s character, price, quality, and general desirability – through a less crowded communication channel.
The children’s toy market is one of the most competitive markets in light of the many options presented to children and how difficult it can be to capture and maintain their attention. Children have stretched, pounded, rolled, and manhandled more than 700 million pounds of Play-Doh since its inception and the company boasts annual sales of more than 100 million cans. Hasbro’s recent attempt to capitalize on a largely untapped branding strategy might give the company the edge needed to continue to thrive in a market that is increasingly losing sales to multimedia devices such as videogame consoles and iPads. Not surprisingly, scent trademarks are rare considering the complex nature of the application, the expense of the process and the low success rate. There are millions of active trademarks registered with the USPTO and about a dozen pertain to scents and only three have been granted full protection under the Principle Register. If Hasbro can overcome the evidentiary issue of its application, it will be quite the accomplishment. At the very least, the process of seeking a registration may lay bare all of the problems with the quixotic quest to immortalize legally an already iconic scent.