United States: The PTO vs. The Phantom Marks: A Ghost Story

Last Updated: October 24 2014
Article by Joshua S. Jarvis

Don't read this one before bed.

RRRR

As autumn sets in and Halloween approaches, my mind turns to jack-o-lanterns, skeletons, and phantoms. Phantom marks, that is. Equally incorporeal though perhaps somewhat less frightening than their ghostly namesakes, phantom marks are registered trademarks that contain a "phantom," or changeable, element.  A well-known phantom registration was _ _ _ _ _ _ FOR DUMMIES for various self-help books, where the dotted line represented different descriptive terms that vary according to the subject matter of the book.  A hypothetical example of a phantom mark is JOSH'S DELICIOUS xxxxx WINE  for wine, where the "xxxxx" represents a type of fruit.  Other examples include marks incorporating a date, a geographic location, or a model number that is subject to change.

It's easy to see why a phantom registration would be desirable.  Rather than spend the money to register a host of variations on a theme, an applicant could rely on a single phantom mark.  And once the mark is registered, a registrant could claim exclusive nationwide rights, not just to the combinations in use, but to every potential combination, including those that may never be used.

Ghostbusters

Phantom registrations were, for many years, accepted by the United States Patent & Trademark Office (PTO).  Starting in the mid-1990s, however, the PTO began to view phantom marks with greater scrutiny, sometimes refusing to register such marks on the grounds that they violated the rule that an applicant may apply for only one mark in a single trademark application. See Trademark Manual of Examining Procedure (TMEP) § 807.

In 1999, the Court of Appeals for the Federal Circuit (CAFC) blessed the PTO's scrutiny, upholding the PTO's refusal of the marks LIVING xxxx, LIVING xxxx FLAVOR, and LIVING xxxx FLAVORS for essential oils, flavors, and fragrances, where "xxxx" stood for a particular herb, fruit, plant, or vegetable. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).  The CAFC explained that, under 15 U.S.C. §1072, registration serves as constructive notice to the public of the registrant's ownership of the mark. In order to make this constructive notice meaningful, the mark as registered must accurately reflect the actual mark used in commerce, so that anyone searching the register for a similar mark will locate the registration. A phantom mark is not able to serve this function because its variable elements encompass far too many permutations to make a thorough and effective search possible.  Ultimately, registration of phantom marks does not provide adequate notice to competitors and the public. Id at 1517-18.  The PTO officially adopted its "no ghosts allowed" policy in an Examination Guide published in 1999.

Some Phantoms Are Friendly (Narrowly Construed) Ghosts

But the CAFC dialed back its stance on phantom marks two years later.  In In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), the court held the registered mark (212) M-A-T-T-R-E-S (where the 212 area code was depicted in dotted lines and thus variable), could (a) be used to demonstrate secondary meaning for the subject application to register 1-888-M-A-T-T-R-E-S, and that (b) the registered mark remained valid despite its ghostly area code element because the possible permutations of this element were limited. Id at 1813.  In a later Dial-A-Mattress decision, the Trademark Trial and Appeal Board (TTAB) noted that "it is clear that not all phantom marks are prohibited, per se, from registration." In re Dial-A-Mattress Operating Corp., No. 76290744 (June 15, 2004).  Despite this apparent evolution of the CAFC's stance on phantom marks, however, the PTO has generally remained strict, and the TMEP itself maintains a blanket prohibition on phantom marks — see TMEP § 1214.

They Ain't Afraid of No Ghosts

Despite the prohibition, some courageous applicants have successfully prosecuted marks with variable elements.  In one example, after an initial refusal based on its phantom elements, and relying on the CAFC's decision in Dial-A-Mattress, friend of the blog John Welch secured registration of the mark THE TOP TEN TTAB DECISIONS OF 20**, where ** stands for the final two numerals of a given year.  Others have creatively obtained "phantom-like" protection by registering the non-variable elements of phantom marks, and using those portions as standalone trademarks, at least some of the time.  For instance, John Wiley & Sons owns a federal registration of FOR DUMMIES for its book series.

A Phantom or a Red Herring?

A recent Trademark Trial and Appeal Board decision underscores the sometimes mystifying nature of  phantom marks. In In re Enterprise Holdings, No. 85675437 (August 25, 2014), Enterprise had filed a use-based application to register the following mark in connection with car rental and related services:

Enterprise 1

To support its use-based application, Enterprise submitted the following specimens which, instead of the blank white space as depicted in the first drawing, contained the terms "commercial trucks" and "fleet management:"

Enterprise 2

The Examining Attorney refused registration on the grounds that Enterprise sought to register a phantom mark, in that the applicant "inserts changeable merely descriptive wording" into the blank space, and also that the applied-for mark was not a "substantially exact representation" of the mark as depicted on the specimen.

The TTAB disagreed on both counts.  On the phantom mark question, the application's description of the mark did not indicate any missing or changeable elements, and thus the mark was entirely corporeal in nature.  In other words, the applicant had attempted to register only a single mark, which of course is not prohibited.  Second, with respect to the specimens, the addition of the descriptive or generic wording "commercial trucks" and "fleet management" was not a bar to registration.  Because these terms "alone cannot function as marks for applicant's services," and because "the terms are separable from the rest of the mark," the inclusion or deletion of the verbiage in question did not alter the commercial impression of the applied-for mark. Thus, Enterprise did not improperly mutilate its mark by depicting a drawing that was missing "essential and integral subject matter." TMEP § 807.12(d).

It's tempting to believe that the TTAB got it wrong, here. After all, it's arguable that Enterprise is using a series of composite marks in the marketplace that all benefit from a single federal registration.  However, the Board's holding that Enterprise's mark wasn't a phantom seems right.  This case wasn't about phantom marks, but about mutilation, and the Examining Attorney appeared to mistakenly conflate the two concepts.  It's important to understand that a "phantom mark," at its essence, exists only within the four corners of a trademark filing — that is, the applied-for mark, along with the mark's description, must improperly seek to secure multiple marks within a single application.  Here, Enterprise sought to register only a single mark, but then use the mark in close (overlapping) proximity to descriptive or generic terms.  The proper inquiry, then, was the mutilation question, and reasonable minds can differ as to whether the Board came to the correct conclusion there.  Enterprise, at least, can sleep soundly and dream its dreams of paper-wrapped rental cars, free of both phantoms and mutilation.

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