The company was initially unsuccessful in obtaining the trademark: the trademark examiner rejected Hasbro’s first filing on May 26, 2017, on the grounds that scented dough lacked distinctiveness (most similar products are also scented). Hasbro  the decision, and Play-Doh’s distinctive “sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough” is now a protected American trademark, preventing other moulding dough companies from using the scent on their own products.

There are involved with scent trademarking, including the subjective nature of smell, the temporality of scents themselves, the difficulty in making the existence of a scent trademark known to consumers, and the possibility of exhausting all available scents. However, the benefits of tying a specific scent to your product are numerous, as they allow you to leave a mark on consumers through . Hasbro themselves have mentioned the benefits of scent trademarking, as stated by Jonathan Berkowitz, senior vice president of Global Marketing for Play-Doh: “By officially trademarking the iconic scent, we are able to protect an invaluable point of connection between the brand and fans for years to come”.

As American law currently stands, in order to trademark a scent, a “substantial threshold” . This has historically been quite difficult for companies to achieve, as applicants must prove that their product’s scent is both nonfunctional and distinctive, in order to receive full trademark protection.

“Nonfunctional” in this context stipulates that the trademark cannot cover aspects “”. As a result, Verizon can trademark the smell of their marquees, but Chanel cannot do the same for their perfumes . The of the product, just as Play-Doh’s scent is arbitrary to its function as moulding dough. If a company can show that their product’s scent is nonfunctional, then it can be added to the supplemental trademark register, and gain limited legal protection (.)

In order to register a scent as a trademark (and not merely be protected under the common law principle of passing off), companies must show that their product’s scent is distinctive. This is no easy task and, before Play-Doh, only  have reportedly satisfied the test. To prove that a product’s scent is distinctive per the USPTO “.” Passing this stage of the test is what made the Play-Doh decision newsworthy, and required Hasbro to present . In Hasbro’s : “Since the PLAY-DOH brand’s inception in 1956, the distinctive smell has consistently served as a hallmark of the brand, and after more than six decades providing children with a source of imaginative and creative play, the scent has become increasingly recognizable among children, parents and grandparents alike.”

Awarding a trademark to Play-Doh shows a departure from the original rationale behind scent trademarking. While the original scent trademark was given to OSEWEZ thread, in part because they were the only company manufacturing , it has been acknowledged by the trademark board itself that Play-Doh is far from the only toy putty company that scents its product. As Play-Doh’s original scent trademark rejection stated, “when purchasers are confronted by the scent of applicant’s goods, they are likely to perceive it as an incidental feature of the goods rather than perceiving it as a source indicator.” In now giving Play-Doh’s scent a trademark designation, they are saying that the specific scent can be a source indicator, not just an incidental feature of the product. This would suggest that the distinctiveness designation could be moving away from the standard of scenting a product in general, towards the standard of giving a specific scent to a product.

While scent trademarks are very much in their infancy, existent through only sparse case law, Hasbro’s actions and publicity will certainly bring these trademarks a large amount of attention, and allow for the development of some often vague laws. This may prove to be the catalyst that could bring a valuable marketing tool the protections it deserves.

Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Nothing to Turn Your Nose up at: Playdoh and the dawn of scent trademarks appeared first on IPOsgoode.

The Game So Far

The story begins with ������ Harjo the TTAB decided to cancel six of the Washington team’s trademarks, determining  that the marks “may disparage Native Americans and may bring them into contempt or disrepute.” However, as noted by attorney and professor , the decision was overturned on appeal in 2003. Fast-forward to 2014 and the play has been run again. On June 18th, the TTAB issued the Blackhorse . Once again, six trademark registrations issued between 1967 and 1990 for the Washington football team’s marks containing  the term “redskins” were cancelled “because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, .”

Section 2(a) of the provides that a trademark can be refused registration if it consists of "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The principle point of conflict for the plaintiffs was the racist nature of the term “redskin.” According to news reports,  released the following statement: “The team’s name is racist and derogatory. I’ve said it before and I will say it again - if people wouldn’t dare call a Native American a “redskin” because they know it is offensive, how can an NFL football team have this name?”

“And Just Like Last Time, Today’s Ruling Will Have No Effect…”

On the other side of the field Bob Raskopt, the team’s attorney, issued a  saying: “We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.” So why does Raskopt seem so confident? Well firstly, the asserts that the evidence provided by the plaintiffs failed to show “that a substantial composite of Native Americans found the term “Redskins” to be disparaging in connection with [the football team’s] services during the relevant time frame.” The issue is that the evidence in question was almost identical to what was submitted in the overturned Harjo case, evidence that was found to be insufficient to uphold the cancellation order. Precedent would thus lead one to believe that the football team is likely to see  the same victorious end result as Harjo when they appeal.

If, however, Raskopt is unsuccessful on appeal, the team will lose the legal benefits of federal trademark registration. As described by the USPTO’s official   on the matter, lost benefits would include no longer having legal presumptions of ownership or rights in the marks, and no longer being able to stop the importation of infringing or counterfeit goods. According to , since the football team would have far less protections from other businesses exploiting their name (ex. in merchandise or apparel), in theory millions of dollars could be lost.

However, the team will not see money fly out of the bank just yet - they still have exclusive use of the logo and existing contracts for the production of “Redskins” products will not be nullified by the cancellation. Most importantly, the TTAB force the team to change its name or marks. If the team does decide to continue using the “Redskins” moniker, ruling and public opinion aside, the state and common laws of where the team does business may provide trademark protections. An attempt to enforce exclusivity could also be made using Section 43 of the , which allows for civil action against those who use a word, symbol, name etc. in a confusing way that may connect to and subsequently damage another entity. Thus, remedies still exist for the football team if the registrations are lost after the appeal.

But is a Moral Victory Enough?

As it stands the football team does not need to change its name, may still be protected under state and common laws, will not see any immediate economic losses, and could seek exclusivity under Section 43 of the Lanham Act. So, after the whistle is blown, did the plaintiffs win anything more than a thumbs-up from the TTAB? While a moral victory does not have the same legal repercussions as may be desired by the plaintiffs, it does represent a growing trend in public opinion against derogatory names and symbols in sports that could force even the most  mind to change. And this public opinion has been voiced fairly loudly. News sources have reported that fifty U.S. senators  to NFL commissioner Roger Goodell, asking him to recommend a name change for the team, that newspapers like the San Francisco Chronicle have they will stop printing the name “Redskins” when referring to the football team and that even  has even weighed in on the issue, saying he would consider changing the team’s name if he knew it offended a large group of people.

It is not yet known how the negative publicity triggered by this case may impact the value of the team’s trademarks, registered or not. Diehard fans may not be swayed to stop buying merchandise, although blogger Jeremy Phillips made a good point in suggesting that the value of a brand lies in the worth given to it by the consumers of the goods and services for which the mark is used. A mark that has been publically denounced as disparaging to Native Americans may not be so valuable to future buyers of the team’s merchandise.

In Conclusion

The play is paused as we wait for the appeal to be heard, but even if the plaintiffs leave the field with the win - nothing but public pressure really has the ability to have the word “redskins” benched for good. It remains to be seen if this will occur, and even though I respect the loyalty many feel towards this historic brand, I know I will be in the stands cheering for a Blackhorse touchdown.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post The Washington Wrong-Skins: A Moral Victory over Tasteless Trademarks appeared first on IPOsgoode.

The 2014 budget, , is an omnibus bill that includes changes to several pieces of legislation, including the Trade-Marks Act. While some of the proposed changes are relatively insignificant issues of terminology, others have the potential to alter fundamental aspects of Canadian Trade-mark law.

According to the , the changes are intended to make the Act consistent with treaty obligations and will adopt the . Changes to terminology include an end to the hyphenated “trade-mark” and changing “wares” to “goods”. Simplified registration requirements will also reduce the term of registration from 15 to 10 years.  The new definition of a trade-mark will include a sign or combination of signs including; 3D shapes, holograms, moving images, mode of packaging goods, sound, scent, taste, texture, and position of sign. The new Act will also remove distinguishing guises and introduces utilitarian function as a limit to registrability. In addition, the Act will permit divisional applications.

The change causing the most consternation is the apparent move from a use-based system to one that is established merely on registration. In the current system, one can apply to register a proposed mark not yet in use. However, if approved, the proposed mark is not actually registered until the owner files a declaration of use. As recently as the decision, the Supreme Court has stated that:

Registration itself does not confer priority of title to a trade-mark. At common law, it was the use of a trade-mark that conferred exclusive right to the trade-mark. While the Trade-Marks Act provides additional rights to a trade-mark holder than were available at common law, registration is only available once the right to the trade-mark has been established by use.

Under the amended legislation, this would no longer be true. Applicants will be able to gain registration for proposed marks without any proof of use of that mark. This departure from fundamental statements of law is likely to result in some tumultuous case law in the coming years.

The shift away from use will necessitate new statements on modes of analysis. For instance, tests for confusion rely on the use of confusing marks or the potential for confusion if the mark is used in any manner open to it under the registration, as the court held in Depreciation of goodwill also has an element of use. How can one depreciate the goodwill in a mark if the owner has not established any goodwill or consumer associations with the mark through use in the marketplace? Theoretically, an owner may be able to argue that even absent their own use, use of the mark by another could depreciate the goodwill and value in the mark. For example, if the junior user had an inferior or hazardous product or created a poor reputation in the marketplace. The senior rights holder may be able to argue that they will have to overcome this depreciation if they actually enter the marketplace. However, it is still difficult to conceive of how courts will protect marks that are unused.

Some fear that the changes will result in an increase in “trade-mark trolls”, entities willing to pay the fees and go through the application process to then sit on marks, which will congest the register and result in costly litigation for individuals who may wish to actually use the marks. Yet, the marks will still be vulnerable to expungement proceedings under of the Act three years after the date of registration, which will provide a check on rampant registration. At that point, interested third parties will still be able to make a request that the registrar demand proof of use. If the registered owner does not produce evidence of use, then the registrar may expunge the mark. It would then be open to the interested party to apply for registration. However, nothing would prevent the initial rights holder from simply re-applying for the mark and sitting on it for another three years.

Although the bill represents an attempt to simplify the registration process, its likely effect will be an increase in litigation.  Without use to act as a guide, courts will have to navigate new tests and precedents as rights holders engage in disputes to clarify their rights under the changed legislation. For now it is , but if enacted as is, Bill C-31 is sure to bring some interesting years to trade-mark law.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School. 

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