Crayola’s Crayons Pass the USPTO Smell Test Fish Tank: Newsletter Volume 24, Issue 21

Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 24, Issue 21

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Crayola’s Crayons Pass the USPTO Smell Test

By Michael B. Stewart

Imagine opening a brand-new box of 64-color Crayola Crayons. Take a whiff. No matter how or where or when you grew up, this is a scent you know. We all know.

But is that enough to obtain a US federal trademark registration? The United States Patent and Trademark Office (“USPTO”) said yes to Crayola on July 2, 2024, granting the company US Federal Trademark Registration No. 7,431,203 for a sensory mark directed to the smell of its crayons. The registration certificate states that a Crayola crayon “consists of a scent reminiscent of a slightly earthy soap with pungent, leather-like clay undertones.”

Produced since at least 1905, with 3 billion Crayola® crayons manufactured yearly, children world-wide have scribbled with them on paper, walls, and coloring books. A specimen had to be mailed into the Trademark Office so that the examining attorney could smell the crayons since the electronic photo (shown below) provided with the filing could not convey the sensory impression that Crayola wished to register.

It took nearly six years for Crayola to complete the registration process, much longer than would be typical. In an extensive and highly unusual trademark application process, more akin to a patent process, Crayola presented scientific evidence.

Crayola provided a wide range of advertisements, third party articles, and even declarations of subject matter experts such as Crayola’s Technical Advisor for Regulatory, Intellectual Property, and Product Research, who has a Ph.D. in Organometallic Chemistry. In turn, the declarations included a wide range of evidence such as spectroscopy charts and color marks applied to substrates of paper that were intended to support Crayola’s attempt to register the smell.

Unsurprisingly, the Trademark Office alleged that the so-called sensory mark could not function as a mark since the smell was “functional” and not unique to Crayola® crayons.

In response, Crayola admitted that their crayons, like other competitors’ crayons have the same ingredients as crayons sold by other companies including paraffin wax, pigments, stearic acid, and optional fillers. Crayola also acknowledged that their crayons are the same in formulation as competitors’ crayons. All crayons are manufactured by weighing these ingredients in a typical crayon formula that is more-or-less consistent across the industry: melting and mixing the paraffin wax, filler, pigments and stearic acid; pouring the molten mixture into crayon molding devices; cooling the mixture in the molds; and ejecting the cooled, molded mixture from the molds.

It then stated, however, “in the interest of protecting its trade secret while at the same time wishing to comply with the USPTO’s request,” that the sensory mark—the Crayola® smell—“present in its finished products occurs as part of a proprietary ‘special step’ resulting from the unique manner in which Applicant stores, melts and combines the base ingredients at certain temperatures and frequencies.”

After much back and forth including an intervention by the Director of the United States Patent and Trademark Office, and then restoration of jurisdiction back to the trademark examining attorney, the mark was finally registered.

While the registration took place too close for this year’s back-to-school season, Crayola’s Chief Executive Pete Ruggiero imagines one day pumping the smell through the aisles of retail stores, triggering nostalgia and the buying of more crayons.

Do you think that Crayola® crayons have a distinctive smell different from that of other crayons or do you think that its crayons smell the same as other brands of crayons?

We welcome your opinion by way of a single question survey that can be found here:

https://www.linkedin.com/feed/update/urn:li:ugcPost:7237624167502659585/

The poll results can be reviewed in real-time, and we will share the outcome in an upcoming newsletter. In the meantime, happy coloring!

Michael Stewart is a founding member of Fishman Stewart. He has worked in a wide range of technical areas including information technology, e-commerce, telecommunications, and mechanical, aerospace, computer, and nuclear engineering. His practice includes domestic and foreign patent prosecution, e-commerce and information technology, patent opinions, intellectual property litigation, domestic and foreign trademark prosecution, trademark opinions, copyrights, trade secrets, rights of publicity, intellectual property evaluations/due diligence and drafting and negotiating technology and intellectual property agreements. Check out his full bio here.