Trademarks can be used in a number of ways to protect multiple aspects of a restaurant business - from protecting the restaurant’s name, to the name of signature dishes, to even the distinctive layout and decor of the restaurant.

The importance of trademarks begins with the very name chosen for the restaurant operator’s establishment. Rather than going with something generic like ‘Michael’s Café’ or ‘Stacey’s Grill’, a local restaurant owner should make the effort to choose a name that is . Choosing unique or distinctive names for menu items is also a great strategy to build value for the restaurant’s brand. A well-known example is McDonald’s , which includes items such as . Although McDonald’s also has many product brands that do not contain its famous “Mc” prefix, this specific family of trademarks helps to make their brand identifiable and distinctive from their competitors.

A restaurant’s layout and décor can also be protected by IP. For example, the nationally known sandwich franchise Mr. Sub, which was known as Mr. Submarine until the early 1990s, successfully obtained an interlocutory injunction to prevent the defendants from replicating the layout of the plaintiff’s restaurants and passing off the restaurant layout as its own distinctive business design[1].

With the anticipated coming into force of the new amendments to the , the protection of ‘non-traditional’ trademarks, such as scents, tastes, textures and sounds, will have the potential to revolutionize how restaurant businesses brand themselves.

For instance, restaurant owners will be able to seek for a scent that is distinctive to one of their signature dishes. The sense of smell is known to play an important role in memory, so a particular scent has the ability to form strong associations in one’s mind. Exploiting a distinctive scent associated with a particular menu item can have a profound impact on a restaurant’s ability to distinguish itself from its competitors beyond what traditional visual  trademarks can achieve.

A well-developed IP strategy can be an effective tool when trying to build a brand. The expansion of the scope of protection for non-traditional trademarks will allow restaurant operators more creative ways to protect their businesses and differentiate themselves from their competitors. Until then, it is clear that IP, particularly trademarks, can be employed by restauranteurs to help set them apart from its competitors, and hopefully allow their businesses to thrive in this highly competitive multi-billion dollar industry that so many struggle to succeed in.

Neda Foroughian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

��1����Mr. Submarine v Bikas (1975) 24 C.P.R. (2d) 135 (Ont. H.C.)

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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.

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