United States: The Phantom Lives! TTAB Reverses Patent Office, Restores Enterprise's Modified Mark

Last Updated: October 21 2014
Article by Scott J. Slavick

When a space is created unexpectedly, can a phantom appear? Perhaps so.

Recently, Enterprise Holdings sought to register a proposed new version of the familiar mark they use for their consumer automobile rental brand ENTERPRISE, but with a key difference. In the new version of their mark, Enterprise's widely recognized green-and-black rectangular flag was surrounded by a modified barrel-shaped pin-line, creating a blank space beneath the mark wherein the company planned to position other words. Enterprise planned to use the new marks for a range of different services, including vehicle dealership, vehicle fleet management and business consultation.

The examining attorney at the U.S. Patent and Trademark Office (USPTO) refused registration, however, on the grounds that Enterprise was seeking to register a phantom mark and that its proffered specimens of use did not show the applied-for mark. According to the examiner, the mark contained a blank space below the wording ENTERPRISE into which the company planned to insert different words or phrases that were merely descriptive. As such, the mark should be held to impermissibly constitute a phantom mark.

The examiner also refused registration on the ground that Enterprise's specimens did not reflect the mark as depicted in the drawing, because they contained additional terms under ENTERPRISE, including FLEET MANAGEMENT and COMMERCIAL TRUCKS, whereas the application's drawing shows the mark as ENTERPRISE and design without any additional wording.

Enterprise appealed, and the Trademark Trial and Appeal Board (TTAB) reversed. It's instructive to look at why.

A phantom registration is one in which the description of a mark contains missing phantom elements, consisting of blanks or dashes that represent elements of the mark that are changeable. Say, for example, a brewery attempts to register the designation SUDS ______ BREW for beer, where the blank above the underscore represents the space in which the applicant intends to substitute various geographical names, such as SUDS CHICAGO BREW, SUDS SOUTH EASTERN BREW, SUDS VEGAS BREW, etc.

One purpose of attempting such registrations is to save time and money by registering many different marks in a single effort. Another is to register and claim exclusive rights to a wide range of combinations, encompassing some not yet used (and some that likely never will be). This effectively gives the registrant a broader scope than any trademark use than they ever have made or will make.

The concern with such registrations is that the examiner—and any commercial enterprise—who searches for conflicting prior registrations and uses will find it difficult, if not impossible, to know what combinations to search and to decide which ones constitute a conflict. For example, in searching a hypothetical application for the registration of the phantom registration of SUDS ______ BREW for beer, the possible combination of SUDS SAN DIEGO BREW for beer might well conflict with another party's prior registration of SAN DIEGO'S BEST SUDS & BREW for beer. But the possible combination of SUDS SOUTHERN CALIFORNIA BREW would probably not conflict with SAN DIEGO'S BEST SUDS & BREW.

Unless the searcher wishes to assume that the blank includes every possible geographic designation, therefore, searching is uncertain. Risk-averse competitors might treat such a phantom registration as being overly broad and containing every possible geographic term on the planet—thus constituting grounds to oppose the mark's registration at the USPTO.

For these reasons, the U.S. Court of the Appeals for the Federal Circuit has held that such marks cannot be registered, because they are too vague and indefinite to enable a PTO examiner to search or to put competitors on notice as to the scope of the exclusive rights that the registrant would thereby receive. The Federal Circuit has also ruled that phantom mark applications violate the one-mark-per-application requirement stipulated by the Lanham Act.

In upholding the Federal Circuit's mandate in Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres Inc., for example, the TTAB refused to register an application for the mark XXX-SHOW, for the service of providing movie-showing schedule information. The XXX—the phantom portion of the mark—was to consist of various telephone number prefixes. Thus, the mark as used could consist of various telephone mnemonics such as "415-SHOW," "212-SHOW" or "630-SHOW." The Board held that the application was an impermissible phantom registration.

Interestingly, in 2002 the Northern District of California rejected a similar challenge that the famous sewn-cloth tab on Levi Strauss's Levi's jeans was a form of phantom registration. Instead, the court explained that the registrations for Levi's tab mark were specific, definite and clear enough—limited by material, location, type of garment and relative size, and that each of Levi's registrations contained a drawing of the mark clear enough to provide notice as to the mark's scope of protection.

Originally published in InsideCounsel

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

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Scott J. Slavick
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