Trademark rights protect the use in commerce of a distinctive “mark” recognized by the public as indicative of the source of a product. Trademark protection is intended to facilitate communication between sellers and buyers, by providing a means for buyers to readily identify the business responsible for the good or service they are interested in buying. A mark can come in a variety of formats, including words, numbers, graphics, colors, sounds, and—rarely—scents. The key requirement is distinctiveness. If a product feature is “inherently distinctive” (suggestive, arbitrary, or fanciful) it is presumptively protected. A product feature that is not inherently distinctive may nevertheless function as a trademark if the seller can demonstrate that it has acquired a “secondary meaning” linking the product to the seller by virtue of advertising, sales, media coverage, or exclusive use over a period of time. However, “functional” product features cannot serve as trademarks. A feature is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”

Scents occupy a delicate position within this framework. Our sense of smell is deeply tied to our capacity for memory, which suggests that a distinctive smell could operate powerfully to link a product to a producer in our minds. But the Patent and Trademark Office has taken the position that a scent can never be inherently distinctive because scent is generally seen as an attribute of the good in question, rather than a trademark that communicates the origin of the good. Therefore, a scent can only operate as a trademark if it is shown to have acquired the secondary meaning of linking the product to seller. Scents resulting naturally from the manufacturing process cannot qualify, nor can scents that make a product more appealing to use.

Accordingly, the scent of plumeria blossoms on yarn has successfully been registered as a trademark, but the PTO denied registration of peppermint scent for a nasal spray because it made the spray more pleasant to use, and orange scent for a fracking fluid because the smell came from an ingredient that made the fluid more biodegradable. All told, there are only about a dozen registered scent trademarks in the United States.

Now Hasbro is seeking to register a trademark for the distinctive smell of Play-Doh. In its application the company describes the scent as “a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” Hasbro’s attorney says the scent, which has been the same since 1955, is “one of the best-known, most unique and instantly recognizable scent trademarks in the world, and . . . has developed an enormous amount of goodwill with consumers.” The smell is certainly salient, and many people can likely bring it to mind simply by thinking of childhood memories. But it remains to be seen whether the PTO will view the scent as sufficiently non-functional. While the vanilla and cherry notes could be unrelated to the utility of the product, the “natural smell of a salted, wheat-based dough” may be inherent to the manufacturing process. If the PTO determines that the salty, doughy smell is a functional attribute of Play-Doh that is inseparable from the other fragrance notes in the claimed mark, it may deny Hasbro’s application.

While Hasbro’s Play-Doh claim for acquired distinctiveness rests largely on shared nostalgia, other brands may face higher hurdles to demonstrating that their scent marks have acquired a secondary meaning. Nevertheless, in 2014, Verizon secured trademark protection for a “flowery musk” scent it pumps into its flagship stores, and such trademarks are poised to become increasingly common as brands look for new ways to differentiate themselves in consumers’ minds.

–Erin Fredrick Conklin

 

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