Although this is not my typical style of blog post, I promised my 7-year-old son that I would use the recent U.S. Trademark Trial and Appeal Board (the “Board”) decision in
In re Monster Cable Products as a “teachable moment.” You may be asking yourself why would my son know about that decision? Well, I must confess, and I’m a bit embarrassed to say so, when my son was a bit younger I began reading aloud Board decisions during our programmed “reading time” unbeknownst, of course, to my wife. Amazingly he enjoys them! Or at least I think he does, since he asks some pretty good questions and is able to stay reasonably “tuned-in.” Or maybe he just likes being with dad. Either way, it’s all-good.
Rather than taking the “easy” way out by adopting “marks” that are capable of “advertising” the associated goods or services, select suggestive, arbitrary or coined terms to use in combination with the desired descriptive term(s). If Monster Cable had adopted a mark using that strategy, such as “Monster Planet” - “Monster Craze” – or “Pinnacle Monster Accessories” (assuming there are no prior users of those marks or similar mark, of course) it likely would not have been run over by the Board.