If you have kids (or a very good memory back to your own childhood), you may recall that Play-Doh has a very distinctive smell. It is such an integral part of the product that Hasbro, Inc. recently filed for federal trademark protection for that scent.

[caption id="attachment_21013" align="aligncenter" width="550"] Photo courtesy of Pixabay.com[/caption]

Hasbro sells 500 million cans of Play-Doh each year and recently made headlines when it announced plans to again manufacture the clay in the United States. According to the company, it has used the same scent in its Play-Doh since 1995. If you are having difficulty placing the scent, the trademark registration application describes it 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.”

Benefits of Federal Protection

Hasbro maintains that it already has "legally enforceable common law trademark rights" for this scent.  However, the company filed a federal trademark application for this scent on February 14 of this year to bolster its legal rights. Federal trademark registration has several important benefits, including:

  • Public notice of ownership of the mark;
  • A legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ®; and
  • Listing in the United States Patent and Trademark Office’s online databases, which will deter others from registering the same or similar mark and prevent infringers from claiming ignorance of the mark.

Policing a Trademarked Scent

Trademark registrations for scents are very rare. In addition to a lower demand for such non-conventional trademarks, they are also more difficult to obtain. As the U.S. Patent and Trademark Office acknowledges in the U.S. Trademark Manual of Examining Procedure (TMEP), “The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” To obtain federal trademark registration for a scent, the applicant must demonstrate that (1) the scent serves a nonfunctional purpose; and (2) the scent has acquired distinctiveness.

Despite the high threshold, there have been at least a dozen scent marks on the federal trademark register since 1990. Examples include a mark described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used for sewing thread and embroidery yarn. Another one is a mark for a “bubble gum” scent for shoes and flip flops.

Assuming Hasbro’s trademark is approved, how exactly will the company enforce it? Since Internet search tools and monitoring services are unavailable for scent trademarks, the company will likely have to rely upon its own investigations and upon the public to notify the company about potential trademark infringements.

While this policing method may be less scientific, the deterrent value alone may make registration worthwhile. According to Hasbro, it is not aware of any potential infringement to date. However, Hasbro is hoping that it can obtain a federal registration to serve as notice to its competitors that they may not use the same distinctive scent in their modeling clays.

Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.