1214 "Phantom" Elements in Marks
In some applications, the applicant seeks to register a "phantom" element (i.e., a word, alpha-numeric designation, or other component that is subject to change) as part of a mark. The applicant represents the changeable or "phantom" element by inserting a blank, or by using dots, dashes, underlining, or a designation such as "XXXX."
Examples include marks incorporating a date (usually a year), a geographic location, or a model number that is subject to change. While these are some of the most common examples of the types of elements involved, there are many variations.
1214.01 Single Application May Seek Registration of Only One Mark
Where an applicant seeks registration of a mark with a changeable or "phantom" element, the examining attorney must refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark. See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Primo Water Corp., 87 USPQ2d 1376 (TTAB 2008); Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres Inc., 56 USPQ2d 1538 (TTAB 2000).
In International Flavors, the applicant filed three applications to register the designations "LIVING xxxx," "LIVING xxxx FLAVOR," and "LIVING xxxx FLAVORS," for essential oils and flavor substances. The applications indicated that "the ‘xxxx’ served to denote 'a specific herb, fruit, plant or vegetable.'" Int’l Flavors, 183 F.3d at 1363-64, 51 USPQ2d at 1514-15. In upholding the refusal of registration, the Federal Circuit noted that under §22 of the Trademark Act, 15 U.S.C. §1072, registration serves as constructive notice to the public of the registrant’s ownership of the mark and, therefore, precludes another user from claiming innocent misappropriation as a trademark infringement defense. To make this constructive notice meaningful, the mark as registered must accurately reflect the mark that is used in commerce, so that someone who searches the register for a similar mark will locate the registration. The court stated that "phantom marks" with missing elements "encompass too many combinations and permutations to make a thorough and effective search possible" and, therefore, the registration of these marks does not provide adequate notice to competitors and the public. Id. at 1367-68, 51 USPQ2d at 1517-18.
In Primo Water, the Board affirmed a refusal of registration of a mark comprising the "placement and orientation of identical spaced indicia" on either side of the handle of a water bottle in inverted orientation, where the description of the mark indicated that the "indicia" can be "text, graphics or a combination of both." Primo Water, 87 USPQ2d at 1377. The Board noted that the varying indicia must be viewed by consumers before they can perceive the repetition and inversion elements of the mark, and that marks with changeable or "phantom" elements do not provide proper notice to other trademark users. Id. at 1379-80. The Board also noted that the only issue on appeal was whether applicant seeks to register more than one mark, and that this issue is separate from the question of whether the proposed mark is distinctive and functions as a mark. Id. at 1380.
See also In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (finding hologram used on trading cards in varying shapes, sizes, contents, and positions constitutes more than one "device" as contemplated by §45 of the Trademark Act).
See TMEP §807.01 regarding the requirement that an application be limited to one mark.
1214.02 Agreement of Mark on Drawing with Mark on Specimens or Foreign Registration
Where an applicant seeks registration of a "phantom mark," the examining attorney must also consider whether the mark on the drawing is a substantially exact representation of the mark as used on the specimen in a use-based application, or the mark in the home country registration in an application based on Trademark Act §44, 15 U.S.C. §1126. See TMEP §§807.12–807.12(e).
The applicant may amend the mark to overcome a refusal on the ground that the mark on the drawing does not agree with the mark as used on the specimen, or with the mark in the foreign registration, if the amendment is not a material alteration of the mark. See TMEP §§807.14–807.14(f) regarding material alteration.
1214.03 "Phantom Marks" in §1(b) Applications
In an intent-to-use application for which no allegation of use has been filed, it may be unclear whether the applicant is seeking registration of a mark with a changeable element. If an intent-to-use application indicates that the applicant is seeking registration of a "phantom mark" (e.g., if the application includes a statement that "the blank line represents a date that is subject to change"), the examining attorney must issue a refusal of registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark, as discussed above. If it is unclear whether an applicant is seeking registration of a "phantom" mark, the examining attorney should advise the applicant that if the specimen filed with an amendment to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c), or a statement of use under §1(d) of the Act, 15 U.S.C. §1051(d), shows that applicant is seeking registration of a mark with a changeable element, registration will be refused on the ground that the application seeks registration of more than one mark. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided before the applicant files an allegation of use, the USPTO is not precluded from refusing registration on this basis.
1214.04 "Phantom Marks" in §44 and §66(a) Applications
The refusal must be made in applications under §§44 and 66(a) as well as §1 of the Trademark Act.