You might have memories of the distinctive earthy smell of Crayola crayons - a possibly familiar aroma that might evoke thoughts of childhood classrooms or the playroom in your home (or on your walls!).
Crayola capitalized on that distinctive scent recently with a win at the United States Patent and Trademark Office (“USPTO”) by registering the scent of its crayon. In its registration certificate, Crayola describes the scent as “a slightly earthy soap with pungent, leather-like clay undertones.” Crayola intentionally developed this scent to give its crayons an “iconic” identity that differentiates them from others in the market. By securing trademark protection for this unique scent, Crayola is making its brand positioning more “sticky” by protecting not just the look of its logos or packaging, but also the emotional appeal the smell of its crayons evokes.
Scents, and other non-traditional source-identifying characteristics (think: sound, shape, etc.), are indeed registrable, but the process of trademarking a scent can be challenging. Section 2 of the Lanham Act (15 U.S.C. § 1052) has been interpreted to protect non-traditional trademarks, including distinctive, non-functional elements such as scents. To receive protection, a scent must be distinctive, either inherently or through acquired distinctiveness known as "secondary meaning." To establish secondary meaning, the applicant must demonstrate that the public perceives the scent as identifying the source of the product. Additionally, the applicant must prove that the scent is not functional, i.e., not essential to the use or purpose of the product, but serves solely as a means of source identification. For example, Crayola would likely be unable to trademark the scents in its “Silly Scents” crayon line. The fruity and sweet scents in these crayons would most likely be considered functional elements, as they are integral to the product’s intended use and purpose.
The complex process of registering a non-traditional scent trademark is illustrated in Crayola’s winding path to securing its scent mark with the USPTO. Crayola’s journey spanned six years and involved overcoming significant legal challenges. Initially, the USPTO examiner rejected Crayola's application, deeming the scent functional. Crayola appealed the decision to the Trademark Trial and Appeal Board (TTAB), arguing that the scent is non-functional because it is not essential to the crayon's ability to function as a crayon. Crayola also argued that the scent had acquired secondary meaning. The secondary meaning argument hinged on consumers instantly recognizing Crayola as the source of the scent and associated with Crayola’s crayons. The TTAB accepted these arguments and reversed the examiner's refusal. The USPTO Director subsequently upheld the TTAB's decision, officially registering the trademark on July 2 (Registration No. 7431203). Crayola’s registration for its scent “reminiscent of a slightly earthy soap with pungent, leather-like clay undertones,” now prevents other companies from using a similar scent in a manner that could mislead consumers or suggest an affiliation with Crayola.
Crayola is not the only brand leveraging scent trademarks to strengthen consumer loyalty. Other examples include:
Hasbro: In 2018, Hasbro successfully registered its distinct, “sweet, slightly musky, vanilla” scent of PLAY-DOH (Registration No. 5467089). Jonathan Berkowitz, the senior vice president of global marketing for Hasbro, explained that because the scent “has always been synonymous with childhood and fun,” trademarking the scent would enable the brand to “protect an invaluable point of connection between the brand and fans for years to come.”
Grendene: Grendene, the Brazilian footwear company, registered a distinctive scent for “[s]hoes, sandals, flip flops, and accessories, namely, flip flop bags” (Registration No. 4754435). The specific scent is described in the mark description as “the scent of bubble gum.” Grendene's bubble gum-scented jelly sandals therefore do not serve a practical purpose in the sandal, but rather a memorable element that distinguishes it from other sandals in the footwear market.
Does your scent have what it takes to acquire a coveted USPTO trademark registration? For questions regarding scent protection or other trade dress needs, please reach out to Sisun Law’s trademark team at trademarks@sisunlaw.com.
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