An eerie specter haunts the trademark application process. It is the so-called “phantom trademark.”
A phantom trademark contains an element, such as a word, designation or phrase that is unfixed. It might incorporate a date, geographic location or model number that is changeable.
But phantom elements, which add a variable component, can exist in nearly any context. Trademark applicants sometimes attempt to use a special designation for the element, such as a blank, underlining, or a symbol such as “xxxx.”
Practitioners who have waded into these backwaters know such shape-shifting trademarks are not entitled to federal registration. Among other things, they raise concerns about adequacy of notice and fundamental fairness to the public. In In re International Flavors & Fragrances Inc., 183 F.3d 1361 (Fed. Cir. 1999), the applicant sought to register the designations “LIVING xxxx,” “LIVING xxxx FLAVOR” and “LIVING xxxx FLAVORS.” The “xxxx” was meant to denote a “specific herb, fruit plant or vegetable.” Affirming a refusal to register, the Federal Circuit pointed to section 22 of the Trademark Act, 15 U.S.C. § 1072. That section provides that registration serves as “constructive notice” to the public of trademark ownership. For that notice to be meaningful, the Federal Circuit reasoned, the registration must accurately reflect the mark as used in commerce. Marks with missing pieces “encompass too many combinations and permutations to make a thorough and effective search possible” and allowing registration of such marks would provide insufficient notice to a public, defeating a vital purpose of trademark registration.
Phantom marks also skirt application rules. A trademark application may only seek to register a single mark. Applicants whose trademarks have changeable elements, however, are effectively seeking the bulk registration of many marks. For example, in In re Upper Deck, 59 USPQ.2d 1688, 1691 (TTAB 2001), the Trademark Trial and Appeal Board concluded that a trading card hologram used in various locations, sizes, shapes and forms constituted more than one “device” as contemplated by section 45 of the Trademark Act, 15 U.S.C. § 1127.
These pronouncements might lead a practitioner to assume that any mark containing fillable blanks can never qualify for registration. That is not the case. If a mark containing a potentially changing element is going to be used in only one fixed way and it actually serves the source-designating function of a trademark, then it can indeed qualify for registration. Take, for example, the marks “I LIKE ____” (U.S. Ser. No. 4215315) and “ONLY IN _____” (U.S. Ser. No. 85288409). Both were published without issuance of a phantom refusal. Similarly, the PTO permitted the mark “_____ IN VEGAS” (U.S. Ser. No. 78697929) to publish without such a refusal. The examiner was careful to note, however, that a refusal might later be warranted if the trademark specimen varied from the mark in the application.
What is the difference? As with all trademarks, what ultimately matters is how the applicant uses or intends to use the mark. Suppose hypothetically that BMW (which now apparently designs Olympic bobsleds) wants to register THE ULTIMATE _____ MACHINE. If BMW intends to fill in that blank space with various words, such as SLEDDING, SAILING or PASTA, it has driven squarely into “phantom” territory. It essentially seeks registration for an indefinite number of marks, contravening the law and policy identified in International Flavors and Upper Deck.
But suppose BMW instead seeks to use the literal text THE ULTIMATE _____ MACHINE in a fixed manner as its trademark. Perhaps it hopes to convey that BMWs are “ultimate” machines and consumers should decide for themselves what makes them “ultimate.” At that point, the circumstances have changed. BMW is using only a single mark to identify its goods. We have certainty about the identity and content of that mark. And a member of the public can confidently search the registry for it. BMW now has grounds to seek a trademark registration.
This subtle distinction yields a couple concrete lessons for practitioners. The first is practical. Before seeking to register trademarks that contain potentially variable elements, practitioners should confirm their client’s actual goals. If the client is truly using the mark as it appears, the mark does not deserve a “phantom” refusal. If instead the client seeks dominion over anything that could fill in the blank, it has another thing coming. To avoid disappointment for everyone, practitioners should ask their clients what they really hope to achieve.
There are also strategic considerations. In the initial application, practitioners should do what they can to make clear that the mark is actually fixed. In a use-based application, this means choosing a clear specimen showing that the blank element actually functions as part of the mark. In an intent-to-use application, where no specimen is available, this goal may not be achievable. Although it may be tempting to add an explanation about the applicant’s intent then and there, the better practice is to wait. Because every examiner is different, it may not be necessary, and may even be counterproductive to raise the issue before it is clear there will be a problem.
Similarly, practitioners should plan for engagement, and even while applying, they should anticipate a refusal and begin marshaling evidence for a response. This means searching for marks containing similar elements that are already published. Ideally they should be of the same type as the one at issue, like a word or design mark. It also means collecting material to cite in the response, such as a client declaration explaining its intention in using the mark. It may also be possible to address the issue in a phone call directly to the examiner. Whatever the approach, practitioners should inform clients about the likelihood of a refusal and the attendant costs for responding.
Prosecuting a mark with potential phantom elements presents unique issues for practitioners. But by keeping a few simple principles in mind, they can limit the chance that it will come back to haunt them.
Thomas A. Harvey is an intellectual property attorney at Harvey Siskind LLP. He focuses on trademark, trade secret, and unfair competition litigation. He can be reached at email@example.com.
In Practice articles inform readers on developments in substantive law, practice issues or law firm management. Contact James Cronin with submissions or questions at firstname.lastname@example.org.