Under what conditions can a scent be trademarked?
Last month, toymaker Hasbro, Inc. filed an application to trademark the scent of PLAY-DOH. Under the Trademark Act, a scent cannot be trademarked unless it is inherently distinctive, and those that serve a utilitarian purpose, such as perfumes and air fresheners, cannot be registered at all.
In addition, the Patent and Trademark Office will not register marks for scents that arise naturally from the manufacturing process. This is because such registrations would prohibit competitors from using essential manufacturing methods. However, a scent that is not a function of a product or process is eligible for registration, provided that there is a claim of acquired distinctiveness.
This is precisely the claim that Hasbro made in its application. Anyone who was first introduced to sculpting as a kid with a can of PLAY-DOH can easily remember the smell. In fact, Hasbro has used the scent in the product since 1955. The company described 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.”
While Hasbro currently likely has common law trademark rights in the PLAY-DOH scent that are legally enforceable, a proper federal registration will provide the company with a number of additional rights in the event Hasbro becomes aware of any unauthorized use of the PLAY-DOH scent.
Currently, scent marks remain far less common than words or logos and enforcing a scent mark is far more difficult than a traditional trademark. Obviously, a scent cannot be searched, and infringement can only be detected if someone discovers the infringing product in the market and notifies the trademark owner. Whether the scent of your product qualifies for federal trademark registration is a question that should be discussed with qualified trademark attorneys.