Is It Unique?
Just like the cobbler who had no shoes, this IP lawyer didn’t get trademark protection on her product. About ten years ago, I created a bingo game people can play during the Jewish holiday of Passover, and named it . . wait for it . . . Passover Bingo! I didn’t even bother applying for Federal trademark protection, because I know that an application for the mark PASSOVER BINGO in connection with a bingo game using words from the Passover holiday would get laughed out of the Patent and Trademark Office. Any Examining Attorney at the U.S. Patent and Trademark Office would find the mark “merely descriptive” of the offered goods – a no-no when it comes to trademark protection. My marketing budget for the game was teeny-tiny, so I didn’t want to come up with a random word or design and then spend time explaining how the game inside the box was a bingo game with words and symbols relating to the Passover holiday. Trademark law presents a bit of an illogical premise: the less descriptive a trademark or service mark is in connection with particular goods or services, the more protection it has! This drives marketing managers crazy. Marketing folks want the product or service to be instantly recognizable to their consuming public.
On the other hand, marks that are "fanciful" or “arbitrary and capricious” in connection with goods or services will have the strongest protection. Yes, it may take more marketing dollars to make your consumer aware of your brand, but you will have a mark that is capable of protection and can’t be hijacked without a fight. For instance, one of my clients registered an adorable hippopotamus in connection with office supply services. Another uses creatures of nature in connection with teas to support a healthy pregnancy. These brands, I believe, are capable of the same bulletproof protection that companies like Starbucks, Lululemon, and others have achieved, by being unique and identifiable only in connection with one particular source.