Tuesday, May 06, 2008

Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Finding that Applicant Primo Water's proposed mark [shown immediately below] contains a phantom element ("namely, text and graphic material or a combination thereof that are identical but inverted copies of each other"), the Board affirmed a refusal to register the mark under Section 1(a)(1) and Rule 2.52. In re Primo Water Corp., 87 USPQ2d 1376 (TTAB 2008) [precedential].

Applicant sought to register, for "bottled drinking water," a mark that it described as follows:

The mark consists of the placement and orientation of identical spaced indicia on a water bottle having a handle, namely the placement of indicia on one side of the handle and the placement of identical indicia on the other side of the handle in inverted orientation. The indicia can be text, graphics or a combination of both. The dotted outline of the bottle and the indicia is not a part of the mark but is merely intended to show the placement of the mark. The dotted outline of Applicant’s logo does not constitute a portion of the trademark of this application but instead merely illustrates indicia.

The Board noted that an application "must be limited to only one mark." A mark that contains a changeable or "phantom" element is considered to be more than one mark. The registration of such marks "does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration." (quoting In re International Flavors and Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999)).

Applicant argued that "the relative placement and orientation of identical indicia on a bottle of drinking water -- not the indicia itself -- can constitute a protectable trademark. The Board disagreed: "applicant is, in effect, attempting to obtain exclusive rights to all labels and the like that would be identical inverted versions of each other."

"In fact, because the placement of a label or indicia on opposite sides of a bottle used in a water cooler would be a normal method of identifying the source of the bottled water, it is the indicia itself, and the fact that they are identical but inverted copies of each other, that must be considered a significant part of the mark. In other words, the (varying) indicia must be viewed by consumers before they can perceive the repetition and inversion elements of applicant's mark."

The Board found this case similar to In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001), which involved an application to register a hologram device for trading cards, regardless of the size, shape, location, or content of the hologram. The Board found that Upper Deck was attempting to register an idea or concept, rather than a single mark.

Here, the Board observed, Applicant Primo is also attempting to register a concept: "the use of indicia on a water bottle that will be in an upright position on the bottle whether the bottle is sitting on its base, prior to use, or when the bottle is upended and placed in a water cooler."

The Board concluded that, "[b]ecause the text and graphic material or a combination thereof is a changeable element, the application is for more than a single mark, and thus registration is prohibited pursuant to 15 U.S.C. Sec. 1051(a)(1) and Trademark Rule 2.52."

TTABlog comment: Not all changeable elements disqualify a mark from registration. See, e.g., In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1507 (Fed. Cir. 2001) [(xxx)-M-A-T-T-R-E-S registrable where xxx is an area code. Also note that the mark THE TOP TEN TTAB DECISIONS OF 20** was registered by yours truly in 2005, the symbols ** representing "the last two digits of the year being reviewed." The key to these registrations is that the variable element has a limited number of possibilities.

Text Copyright John L. Welch 2008.


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