By: Kandyce Hall
Hasbro, a creator of kid’s brands toys, has recently filed an application to trademark the “distinctive scent” of Play-Doh with the U.S. Patent and Trademark office. The mark filed as a NON-VISUAL PLAY-DOH SCENT MARK is for good and services of toy modeling compounds. If Hasbro receives its federal registration it would not be the first scent mark. The first scent mark registration was issued in 1990 for “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” that was used for sewing thread and embroidery yarn. The problem with trademarking smells is deciding how the smell should be described. Everyone may smell things differently. It is also important that your smell is distinctive and does not function as part of the use for the product. Small business should be aware that they can protect more than just the products and services that come from their brands. If Hasbro is success in receiving trademark protection this may open the door for more scent marks to receive federal registration.
Link: https://goo.gl/fUxg8, https://goo.gl/OP7PXj
By: B. Alicia Johnson
Back in early February, Adidas ‘picked a trademark fight’ with Tesla. The clothing and lifestyle brand claimed likelihood of confusion and dilution against the electric car company.
In a trademarking process, in order to become a federally registered trademark, a mark must go through a publication stage. At this stage, a mark is published to the general public in the Unites States Patent and Trademark Office’s Official Gazette. It is during this time that those who have pending or already registered trademarks may file oppositions to newly published marks in order to have them stopped from becoming registered trademarks. The reasons for these oppositions vary, but the most common reason for filing an opposition to a published trademark is for the likelihood of confusion.
That is the case here. Counsel for Adidas stated, “The Adidas 3-Stripes mark is well known to the consuming public and trade as identifying and distinguishing Adidas exclusively and uniquely as the source of products to which the mark is applied.”
One of my colleagues brought up a very good point while discussing this matter, pointing out that it is not likely for consumers to walk into a car dealership, see the logo, and all of a sudden think they can buy shoes from the same place. However, that is when Adidas’ stronger argument (in my opinion) kicks in.
The brand also brings a claim of dilution. The brand does not oppose Tesla’s efforts to register the logo for the purpose of selling it’s cars, but rather for the more related purpose of selling affiliated merchandise such as hats, shirts, and other apparel. The brand wrote, “in view of the similarities between the Adidas 3-Stripes Mark and [Tesla’s] three stripe design … and the fact that their respective goods and services overlap or are otherwise closely related, there is a likelihood that applicant’s goods will be perceived as being sponsored by or affiliated with Adidas.”
I believe that it is likely, if approved, the Tesla three stripe mark will evolve and become very popular. In addition to representing cars, the logo will likely be used in promotional materials such as t-shirts and hats. This is likely to dilute the value of the Adidas three stripes mark because Tesla will be using their logo on some of the same items and in the same way that Adidas does. This is what Adidas is attempting to assert in its claim and I believe is a solid argument.
Adidas has long fought for its three stripe mark. Just in 2016, the brand filed 11 similar TTAB cases and most recently it has taken federal action against notable brands such as Marc Jacobs, Forever 21, and Sears.