TRADEMARK APPLICATIONS WORTH TALKING ABOUT By Nick Guinn Article graphic illustrations courtesy of Nick Guinn
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bout half a million trademark applications are filed at the United States Patent and Trademark Office (“USPTO”) each year. Those applications are reviewed by more than six hundred trademark examining attorneys, who issue certificates of registration for more than fifty percent of the applications.1 This article cannot address each of those applications or registrations—nor should it. However, hidden among the troves of filings each year are a few trademark applications worth talking about. These examples show how exacting the application process can be, shed light on how familiar companies distinguish themselves from their competitors, offer a glimpse into the myriad legal considerations that accompany celebrity status, and reflect tensions between state and federal law in evolving markets.
Trade Dress Most people are aware that names, logos, taglines, or a combination thereof can be trademarked. However, product design and packaging, sounds, scents, etc. may also be registered as “trade dress.” Applications to register such “trade dress” present unique issues that do not necessarily arise with names and logos. Reg. No. 5,467,089 for the Play-Doh Scent. Hasbro, Inc. owns a registration for a scent mark described as a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough. This scent is recognizable as Play-Doh, even if most consumers could not identify the individual scent components.
When Hasbro attempted to register the scent, the examining attorney argued that incorporating a scent into a toy modeling compound is a non-distinctive feature and fails to serve as a trademark. The examining attorney argued that the act of adding a scent to a toy modeling compound is simply an incidental feature and does not distinguish the product. Hasbro submitted a container of PlayDoh modeling compound to the USPTO as its specimen for the application. The company noted that a competing product is available in six scents (watermelon, orange, banana, lime, pear, and pineapple), which is completely distinct from the combined vanilla cherry and salted wheat-based dough scent of Play-Doh. Hasbro emphasized that there is no overlap between Play-Doh’s scent and the scents of its close competitors. In support of its position that the Play-Doh scent is distinctive, not merely incidental, Hasbro submitted the declaration of Greg Lombardo, its Vice President of the Global Branch Strategy and Marketing Division for Play-Doh and Play School. Lombardo’s declaration was devoted, in part, to establishing the widespread sales of Play-Doh and also to identifying a number of articles and other references describing and discussing the unique and distinctive scent of Play-Doh. The articles written by end users of Play-Doh attested to the undoubtedly distinctive and source-identifying nature of the applied-for scent mark that is the PlayDoh scent. In other words, Hasbro showed that end users could identify Play-Doh by its
vanilla cherry and salted wheat-based dough smell. Hasbro also offered an unsolicited reader survey conducted in 2017 by the World Intellectual Property Review, which found that the majority of its readers (70%) believe that the Play-Doh scent mark application should be granted registration due to its acquired distinctiveness. Using these independent sources had the intended effect. Hasbro’s response, relying heavily on the evidence of how consumers actually experience Play-Doh’s signature scent, overcame the initial rejection, and its scent mark registered on May 15, 2018. Reg. No. 3,137,914 for the Crown Royal Bag. Crown Royal Canadian Whisky has a distinctive, cut-glass bottle, but the most well-known aspect of its packaging is the deep purple bag with gold tassels that surrounds the bottle. When Crown Royal attempted to register its famous purple bag, the application was initially refused as merely functional and merely ornamental. The examining attorney argued that the mark was functional because the fact that the bag is made of soft, insulating, velvet fabric in a pouch shape with a drawstring handle, makes it functional for packaging bottled spirits, and it served simultaneously as an ornamental protector and carrier for such goods. The examining attorney argued that the mark could be registrable, but product packaging is not inherently distinctive and, therefore, cannot be registered on the Principal Register without a showing of acquired distinctiveness under Section 2(f ) of the Lanham Act. Crown Royal responded succinctly and with little evidence. That initial response was insufficient to overcome the refusal. In the second refusal, the examining attorney dismissed articles calling the purple bag “iconic.” Such description was “not a compliment to a little cloth purple bag” but rather “a tribute to a long-lived, successful advertising campaign.” The examining attorney noted that the bag was “one of many similar pouches with double drawstring closures” that been rendered “distinctive” only “because of the marketing minds who made it so.” Office Action dated Oct. 3, 2005. Crown Royal responded again and, this time, submitted several exhibits demonstrating the expenditures and nature of Crown Royal’s advertising. For instance, Crown Royal spent more than $300 million in advertising over the course of five years. Many of those advertisements focused exclusively on the purple May–June 2021
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