trademarking a scent

Trademarking a Scent: Hasbro Not Succeeding Yet

It was reported back in March 2017 that Hasbro, Inc., submitted an application to trademark the distinctive scent of Play-Doh, the Hasbro-owned toy modeling clay that we all probably remember playing with as children. Hasbro describes Play-Doh’s smell 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.”

Trademarking a scent is allowed under the Lanham Act. However, obtaining a scent trademark is rare. A review of the files shows that the two biggest hurdles are proving the non-functionality of the scent and proving that the scent either is or has acquired distinctivenessAccording to research done by online journal MentalFloss.com, as of October 2015, only 10 scent trademarks have been approved by the USPTO, although only two were approved for the principal registry. The two registered on the principal registry are one for a cherry scent added to engine oil lubricants made by Manhattan Oil, Inc. and one for bubble-gum scent added to the packaging for flip-flop shoes and bags. See here.

Lessons From the First Approved Scent-Mark: OSEWEZ

The first trademarked scent was issued in 1990 to a California company, called OSEWEZ, for flower-scented yarn and embroidery thread. According to the company, using scented yarn made sewing “oh, so easy” — or maybe “oh, sew easy.” In the case of OSEWEZ, the company added the fragrance. In other words, the fragrance was NOT inherent in the nature of the yarn or thread.

The Trademark Examiner rejected the trademark application, but was reversed on appeal by the Trademark Trial and Appeal Board (“TTAB”). See here.

The TTAB found the following facts significant in holding OSEWEZ’s scent was trademarkable:

  • OSEWEZ was the only company that marketed these products — yarn and embroidery thread — with a fragrance
  • Fragrance is/was not an inherent attribute or natural characteristic of yarn and thread
  • Fragrance was a feature supplied by OSEWEZ
  • OSEWEZ promoted the scented feature of her goods in advertising
  • OSEWEZ demonstrated that customers, dealers and distributors recognized the scent as an identifier of OSEWEZ as the source of these goods

Based on the foregoing, the TTAB concluded: “Upon careful review of this record, we believe that applicant has demonstrated that its scented fragrance does function as a trademark for her thread and embroidery yarn. Under the circumstances of this case, we see no reason why a fragrance is not capable of serving as a trademark to identify and distinguish a certain type of product.”

Lessons From Orange-Scented Fracking Fluid: Flotek Industries

Since 1990, another criterion can be added:

  • Fragrance added cannot be useful or otherwise add functionality

In the case of OSEWEZ, the chemical added to create the fragrance did not add any functionality (like acting as a lubricant and thereby making the thread easier to pull).

By contrast, in 2015, the USPTO rejected a scent trademark application for orange-scented fracking fluid for Flotek Industries. See Wall Street Journal report here.

Flotek was a Texas-based producer of hydraulic-fracturing fluids which are used to extract natural gas and oil from underground. Flotek added a chemical called D-Limonene to its fracking fluids and the chemical gave its fluids an orange-like fresh-fruit smell. The USPTO rejected the registration of Flotek’s scent mark because the chemical that created the scent also had functional advantages, namely, they made the fracking fluids more biodegradable and helped ease the flow of well products to the surface. The Trademark Examiner cited Flotek’s own statement to Investor’s Business Daily wherein Flotek management was quoted as saying that their fracking fluids were “… potentially more environmentally friendly and can boost well output.”

Since the scent had functionality, the Examiner denied registration on the grounds that the scent failed to function as a trademark — that is, failed to function as a identifier of origin.

Play-Doh Application Rejected

On May 26, 2017, Hasbro’s trademark application was rejected. See here. The Trademark Examiner rejected the application because, generally, a scent for a toy modeling clay-type compound is not a unique identifier of modeling clay-type compounds. According to the Examiner, consumers are aware that such added fragrances are common and that such are intended to render the modeling compounds more useful or appealing, rather than to identify the source of the goods.

In this respect, the Examiner wrote:

“In the instant case, scented toy modeling compounds are common, as indicated by the attachments from Reallygreattoys.com, Specialneedstoys.com, Lakeshorelearning.com and Amazon.com (showing BoJeux Tutti Frutti Scented Modeling Dough). Thus, the practice of adding scents to toy modeling compounds is not distinctive in marketplace. Therefore, when purchasers are confronted by the scent of applicant’s goods, they will likely to perceive it as an incidental feature of the goods rather than perceiving it as a source indicator.”

The Examiner also held that Hasbro had not provided sufficient evidence that the fragrance had acquired distinctiveness despite being sold in commerce for more than 65 years. Hasbro was given the opportunity to offer more evidence that the scent had acquired distinctiveness. However, to date, Hasbro has not added to its application.

The Hasbro case presents a nice contrast to the OSEWEZ case. In applying for trademark status with respect to scented yarns and embroidery thread, OSEWEZ presented evidence that they were the only company adding fragrance, that they actively promoted the fragrance as a product identifier and that customers had come to recognize the fragrance as an identifier of OSEWEZ’s products. By contrast, with modeling clay-like compounds, adding fragrance is common in the marketplace. Hasbro offered no evidence that it marketed Play-Doh on the basis of its scent and Hasbro did not offer enough evidence that customers recognized the Play-Doh scent as an identifier or indicator of origin.

Contact Revision Legal

If you need more information about scent-marks or about any other type of trademark, call the experienced trademark attorneys at Revision Legal today. We can be reached by using the form on this page or by calling us at 855-473-8474.

 

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