If you were a kid who loved PLAY-DOH, you likely have a fond memory of the smell that if sniffed now, would bring you all the way back to your childhood.
The distinctive scent, which has been used since 1955, is described in the application 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.”
Well, PLAY-DOH maker Hasbro, Inc. recently filed for federal trademark protection for the smell of its PLAY-DOH modeling clay. Hasbro’s trademark counsel, Catherine M.C. Farrelly recently sat down with Inside Counsel to discuss the importance of trademarking the smell of PLAY-DOH. Farrelly, partner and chair of the Trademark & Brand Management Group and member of the Litigation group at Frankfurt Kurnit Klein & Selz who filed the application.
“Hasbro’s PLAY-DOH scent is one of the best-known, most unique and instantly recognizable scent trademarks in the world,” said Farrelly. “And has been serving as a trademark for decades. A federal registration will reinforce Hasbro’s existing common law trademark rights in the iconic PLAY-DOH scent.”
Hasbro already has legally enforceable common law trademark rights in the PLAY-DOH scent. However, federal registration gives a number of legal benefits, including legal presumptions of validity and ownership. Because of that, according to Farrelly, registering this mark will strengthen the company’s rights and give it an advantage in enforcing those rights against infringers.
To date, Hasbro has not become aware of any infringements of its rights in the Play-Doh scent, but given the highly recognizable, artificial fragrance of PLAY-DOH, the company would prefer to ensure that the competing manufacturers of modeling compounds are well aware that they may not attempt to replicate that well known scent.
“That said, policing scent marks is certainly more difficult than policing traditional trademarks, such as word marks,” explained Farrelly. “For word marks, trademark owners can order watch services that help them identify infringers. Those services search through the federal and state registers, the Internet, business directories and other sources for the purpose of identifying confusingly similar marks.”
However, you can’t search a smell, and there is no commercial watch service currently available for scent marks. So, companies with scent marks generally will only find out about infringement if someone comes across an infringing product and brings it to the trademark owner’s attention.
So, is smell often trademarked? No, according to Farrelly. “Scent marks are much less common than word marks or logos, but there have been scent marks on the federal trademark register since 1990.”
The importance of registration applies equally to scent marks as it does to more traditional types of trademarks. Federal registration gives quite a few legal benefits, including rights throughout the entire United States and a presumption that the registered rights are valid.
Farrelly said, “Hasbro’s PLAY-DOH scent is one of the best-known, most unique and instantly recognizable scent trademarks in the world, and it has developed an enormous amount of goodwill with consumers since it was first used in 1955. That is precisely the type of source-indicator that the trademark law is designed to protect.”