Can Smells be Trademarks?

Apr 30, 2020 Nashville, TN

By: Justin McNaughton, Senior Counsel

Recently we published an article about trademarking Pitbull’s grito, about the history of the sound, and what it means. In the days since then, we’ve seen some interesting tweets and comments.

For instance, here was a question posted to LinkedIn on NYU’s Law School page:

Well, are smells next?

It’s actually a trick question, but we think it is still a good question to which many people don’t know the answer.

About 30 years ago, the United States Trademark Office granted the first trademark for a fragrance to Celia Clarke. In re Clark 17 U.S.P.Q.2d 1238 (Trademark Tr. & App. Bd.), 1990 WL 354572. She obtained that first trademark registration for a fragrance applied to “sewing thread and embroidery yarn.” She sold embroidery yarn that was infused with the fragrance of Plumeria blossoms. The trademark office held “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.” Id.

A few years ago, Hasbro® obtained its own trademark for nostalgia for childhood, or at least for the smell of Play-Doh® we all remember from our childhood. It is registered as U.S. Reg. No. 5467089. That particular trademark is for “toy modeling compounds” and is described as “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.”

It isn’t easy to get a trademark for a smell though. Like sound marks, the applicant typically must show that the smell has acquired distinctiveness so that it functions like a trademark. In other words, you have to show that when people smell it they recognize the product based on the smell. For Play-Doh®, more than 3 billion cans of products sold to generations of people did the trick though.

If you’re like me, you can almost smell that unique fragrance of Play-Doh® just thinking about it. I’m pretty sure even all these years later I can instantly tell PLAY-DOH® apart from any other brand just by its smell.

This doesn’t mean all smells are trademarks. Some things just smell nice and some things just stink. The difference is when you apply a smell to your product in a way that helps your customer distinguish your product from all the other products out there.

Thanks for the question Nik; I hope you don’t mind the formal response.

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Can Smells be Trademarks?

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