Wednesday, February 05, 2014

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 In re Dana Limited, Serial No. 85447797 (January 30, 2014) [not precedential].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.

Read comments and post your comment here.

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.


At 10:48 AM, Anonymous Gene Bolmarcich, Esq. said...

Let's suppose for argument's sake that Dana instead drew the number 44 in a way that showed the "4"s in dotted lines and claimed a very unique (inherently distinctive) color combination. Under the rules this is OK because the dotted lines would merely show position. Sure, the description would probably have to "claim" that the matter contained within the dotted lines forms a two digit number BUT the number itself is not claimed as part of the mark. Query how this is different since in my example the number can be any number, even one that is already registered for identical goods. Could the application be refused under 2(d) because the number COULD BE the one that is registered?

At 10:53 AM, Anonymous Gene Bolmarcich, Esq. said...

To further illustrate my last point (lest it be lost on most, including me when I read it tomorrow), I was just looking at a drawing of a service dress mark for bar services that included a green awning over a bar where the shape of the awning was in dotted lines (because the shape was very common and therefore had to be 'disclaimed'). This application was allowed. Does the mark include ANY shape awning? If not that what does it include ("green" can't just exist in a vacuum)?

At 2:28 PM, Blogger John L. Welch said...

What if Dana's applied-for mark had been limited to two digits? Would the Dial-A-Mattress case then govern, since the number of combinations would be limited to 100 whereas in Dial-A-Mattress, 1000 possible combinations were okay.

At 2:33 PM, Anonymous Gene Bolmarcich, Esq. said...

It seems to me that Dial-A-Mattress gave too much credit for its holding to the limited number of area codes whereas in reality the real reason was that the Board was effectively creating an exception for area codes (i.e. all area codes are the same...they're area codes!). So I don't think 100 combinations would move the Board to a different holding.

At 2:41 PM, Anonymous Gene Bolmarcich, Esq. said...

Does the description over-ride the drawing, which shows only two digits??

At 6:23 PM, Anonymous Anonymous said...

Dotted lines outlining a number which is NOT claimed as a feature of the mark (showing placement only) would differ substantially from the myriad potential numbers in this case, which were claimed as a feature of the mark.

At 9:24 AM, Anonymous Gene Bolmarcich, Esq. said...

I must ask Anonymous "showing placement of what?"


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