WYHA? TTAB Affirms Refusal to Register Phantom Mark
The Board affirmed a refusal to register the mark shown below for axles for vehicles," in which mark the "44 shown in brokes [sic] lines represents that any number with at least two digits may be used," on the ground that applicant was seeking to register multiple marks in violation of Sections 1 and 45 of the Trademark Act. In re Dana Limited, Serial No. 85447797 (January 30, 2014) [not precedential].
Applicant Dana admitted that its mark contained a "phantom" element, but argued that the mark should still be registered because (1) it is the legal equivalent of Applicant's prior registered marks, (2) the mark is "limited" in accordance with prior case law, and (3) PTO practice allows such a registration.
Dana's prior registrations covered the diamond design, or the design plus the word DANA, without any digits. The Board, not surprisingly, found none of the registered marks to be the legal equivalent of the applied-for mark.
Dana's argument that its mark was limited because it covered only two-digit combinations was belied by the description of the mark: "at least two digits may be used." This contrasted with the In re Dial-A-Mattress case, where the phantom element was a telephone area code, "of which ... there are limited possible combinations." The Board agreed with Examining Attorney Benji Paradewelai that "applicant’s proposed phantom mark makes an accurate search for conflicting marks impossible, and gives insufficient notice of applicant’s mark on the register."
As to the prior-PTO-practice argument, Dana pointed to registrations for the marks
NDA, WEBSTRATEGIES---, ___COWLENDER, and SPL123X (the "123" representing phantom digits). The first two registrations, however, have been cancelled, and all four were issued prior to the relevant case law. The fourth registration is owned by Dana and includes a phantom element for a "part or model number consisting of two or three digits which vary depending on use of the mark," but the Board exorcised that argument by pointing out once again that every case must be decided on its own merits.
And so the Board affirmed the refusal to register.
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TTABlog note: Did this applicant/appellant have a ghost of a chance? Put another way, was this a WYHA?
Text Copyright John L. Welch 2014.