What some companies get wrong about trademarks

Can’t you just smell the Play-Doh?

Hasbro describes the scent as “the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.”

Last year, Hasbro sought trademark protection for its famous product’s supposedly signature scent. But it didn’t work, at least not on the first try: the USPTO refused the registration because it didn’t think Play-Doh’s smell functioned as a trademark to consumers.

The company hasn’t backed down, though. Last month it filed a 384-page response to the non-final refusal, citing media coverage calling the Play-Doh scent “iconic,” “legendary,” “an important part of its brand,” and “as identifiable to many consumers as their mothers’ faces.”

There’s a larger lesson here. It’s simple, really: in order to acquire legal rights to a trademark, a producer must use it as a trademark. Otherwise, consumers won’t perceive it to be one. A mark can’t earn protection if it fails to function as a mark.

What’s a trademark, anyway? You can probably think of plenty of examples. Toddlers recognize logos before they learn to read — 93% of 3–5 year olds know that the golden arches equal McDonald’s.

Will someone pls check on ketchup? via Huffington Post

A trademark can be anything. Typically it’s a word, phrase, logo, or design.

via http://ad-logo.blogspot.com

But a color, sound, moving image, or even a smell can function as a trademark, as long as producers use it as one and consumers understand it that way. Bet many of you know what brand these are:

Just ask J.Lo

Every trademark is only a trademark for specific goods or services: The Twitter bird for social media; the CBS triple-chime for entertainment; Chester Cheetah for fluorescent orange cheese curls; White Castle for restaurant services.

Have a trademark you want to protect? You can apply for federal or state registration, but you don’t have to. You’ll get legal rights automatically when you use a distinctive, protectable mark consistently with whatever you’re selling.

But there’s a catch people sometimes forget: you have to use the thing you want to protect as a trademark. That means printing it prominently on your product, packaging, signs, etc. or using it in a way that draws attention to it.

Just using a word or phrase as a hashtag or domain name isn’t using it as a mark. (For more on hashtags as trademarks, see here, here, and here.)

Using something as a book title or a song lyric doesn’t count either. Taylor Swift has applied to register lyrics including “This Sick Beat,” “Party Like It’s 1989,” “‘Cause We Never Go Out of Style,” “Could Show You Incredible Things,” and “Nice to Meet You, Where You Been?” for a bunch of different goods and services, but she won’t get protection unless and until she uses them in commerce, as trademarks for those things.

Are you listening, Tay?

When words provide description, instruction, or information, they’re not being used as marks.

Catchphrase use isn’t trademark use — how bow dat?

Dancing next to a shark that flubs the choreography is also — obvs — not trademark use.

Perry wasn’t able to assert trademark protection for the shark itself, but has pending TM applications for the phrase “Left Shark” for various goods and services — now she just needs to start using it.

And when you throw a slogan on the front of a T-shirt or a trucker cap and sell it? Not a trademark use.

“Use as a mark” means using the mark in such a way that the public recognizes it as a trademark — a symbol that tells people who made the product or lets them differentiate it from products made by competitors.

Proper trademark use means you shouldn’t have too much trouble differentiating these options, unless maybe you drink them first

Courts and the USPTO know about this requirement, but they don’t always enforce it. That can mean companies get trademark protection for stuff they’re not using in a trademark way.

Bullies sometimes assert trademark rights to stop their competitors from using a phrase or symbol when they actually never used that phrase or symbol as a trademark themselves, and thus have no rights to assert.

Kim’s face is me when I see assertion of trademark rights without use as a mark

Who cares? Well, if you want to establish trademark rights, make sure you can show that you’re using the thing you want to protect as a mark.

Like how Pepsi’s word mark and logo are right there on the box, extra large. via http://adage.com/article/news/pepsi-names-beyonce-brand-ambassador/238697/

And if someone accuses you of trademark infringement, check to see if they’re using their own mark in a trademark way. If they’re not, they may not have legal rights to enforce against you. In other words, #bye.

Got it? Good. Hate it? Don’t @ me. (Ok, @ me.) Does trademark use give you life? I think you know what that means:

Alexandra J. Roberts is an Associate Professor at UNH Law. She teaches & writes about trademarks, IP, entertainment law, & contracts. Follow @lexlanham.