Written By: Tabina Haider
As technology progresses, the realm of trademark law is expanding. Many things are now trademarkable; from words and sounds to shapes and symbols. This has grown even to the sense of smell. Precedent has shown that it is possible to trademark a smell. [1] Think back to your kindergarten years and see if you are able to recall the smell of Play-Doh. To many, a distinctive smell pops into their minds that makes them think of Play-Doh specifically. These were the arguments that Hasbro, the company that manufactures Play-Doh, made to the United States Patent and Trademark Office (“USPTO”) when filing to trademark the scent. [2] Due to the distinctive nature of this Play-Doh scent in connection with its goods, Hasbro was able to successfully trademark this particular smell. [3] This trademark makes the Play-Doh scent Hasbro’s official property, prohibiting others from using it. [4]
Since smell is considered trademarkable, the question that naturally follows is whether flavor may also be protectable. Smell and taste are largely connected, and the properties of both senses are very similar, so it makes sense that if one is trademarkable, then the other is as well. The answer, according to caselaw, is that flavor mostly cannot serve as a trademark due to its functional nature. [5] Caselaw even states that scent should also not be trademarkable. [6] This is because flavor and scent are generally seen as a characteristic of a good rather than a trademark and can never be inherently distinctive. [7] Since flavor is the essential function of the product, it is almost impossible to trademark because something that acts to serves its purpose cannot be a trademark.
While it is difficult, it is not impossible to protect flavor as a trademark. A strong showing of acquired distinctiveness can be used to illustrate that a flavor or scent serves as a mark. [8] If an inventor is able to prove with substantial evidence, as Hasbro did with the smell of Play-Doh, that a particular taste makes consumers associate that flavor with the inventor’s brand, that flavor will be protected.
[1] Franco Galbo, Making Sense of the Nonsensical: A look at Scent Trademarks and Their Complexities, IPWatchdog (Dec. 21, 2017), https://www.ipwatchdog.com/2017/12/21/scent-trademarks-complexities/id=91071/ [https://perma.cc/8ZP8-JLNZ].
[2] Rachel Siegel, Remember How Play-Doh Smells? U.S. Trademark Officials Get It., Wash. Post (May 14, 2018), https://www.washingtonpost.com/news/business/wp/2018/05/24/remember-how-play-doh-smells-u-s-trademark-officials-get-it/ [https://perma.cc/977J-RSMK].
[3] Id.
[4] Id.
[5] In re Pohl-Baskamp GmbH & Co., 106 U.S.P.Q.2d 1042, 1048 (T.T.A.B. 2013).
[6] Id.
[7] Id.
[8] Id. at 1049.
