We had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered.
Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around to looking into the situation a bit so we can hopefully put this important question safely to rest, so to speak. But, before getting too deeply into details that might leave some counting sheep, I’m reminded of a few from our archives on the ubiquity of My branding:
As these gems from the archives confirm, building a brand around the word My, raises serious questions, not about genericness, but about a limited scope of rights, given how commonly the term appears as part of trademarks.
Just because a term is common doesn’t make it generic. Even commonly used words can be descriptive, suggestive, and/or arbitrary for the goods/services in question. Remember the Spectrum of Distinctiveness and how the Suggestive/Descriptive line can be challenging?
While it is clear that Pillow is generic for a pillow, what does My add to the mark, and does the addition of the word My render MyPillow as a whole descriptive or suggestive of pillows?
An argument certainly exists for descriptiveness, given the number of Supplemental trademark registrations for marks having a similar My format, and given the existence of more than a hundred registrations and applications that disclaim the word My from the mark as a whole.
Yet, MyPillow is federally-registered on the Principal Register without a showing of acquired distinctiveness, so the USPTO is on record believing MyPillow is suggestive, not generic or descriptive. And, now that the registration is over five years old and incontestable, challengers to the validity can only raise the descriptiveness/distinctiveness argument in their sweet dreams.
Perhaps the logic on suggestiveness relates to the ambiguity of the word My. When Mike Lindell is holding the pillow above he refers to it as MyPillow. When he sells it to you, does it become YourPillow? And, then once you have it, from your perspective it becomes MyPillow again?
What I’m left wondering is how can the below federally-registered mark peacefully coexist for pillows, given the prior MyPillow federal registration, having both priority of use, filing, and registration?
So, one way to protect MyPillow as your trademark would be to engage a systematic watch service of filings at the USPTO. The MyPillow registration issued two months before the above mark was published for opposition, so why was no 2(d) refusal issued or opposition filed?
It appears that MyPillow started a pillow fight with the owner of the above mark by filing a trademark infringement lawsuit back in 2012, and again in 2013, but the registration for the above mark remains on the Principal Register, sending the message of thin rights, leaving an opening for others to join with other My marks, believing there will be no more pillow fights.
Marketing types, what are your thoughts about the MyPillow brand? Would your head find any support with this simplistic, but clearly successful brand name?
Trademark types, would this situation keep you up at night or could you sleep restfully given the apparent scope of rights and these close and coexisting third party registrations?
In the end, perhaps as they say, when you make your bed, especially with my pillow, you end up having to sleep in it, lumps and all, right?