Wednesday, August 27, 2014

TTAB Reverses ENTERPRISE Phantom Mark and Mutilation Refusals

The Board reversed a refusal to register the mark shown below for vehicle rental and leasing and fleet management services, rejecting the PTO's contention that applicant's mark is a "phantom mark" and overruling the Examining Attorney's objection to the specimens of use. In re Enterprise Holdings, Inc., Serial No. 85675437 (August 25, 2014) [not precedential].

Phantom mark: The examining attorney contended that applicant was trying to register more than one mark, because applicant "inserts changeable merely descriptive wording" in the blank space below the word ENTERPRISE. As such, the mark is a phantom mark.

The CAFC has defined a phantom mark as "one in which an integral portion of the mark is generally represented by a blank of dashed line acting as a placeholder for a generic term of symbol that changes depending on the use of the mark." Registration of a phantom mark is prohibited because one cannot conduct a proper search of the mark and fails to give proper notice to other trademark users. [Example: HERBAL ESSENCE OF xxxx, where xxxx may be one of a number of fruit names, such as HERBAL ESSENCE OF APPLE, HERBAL ESSENCE OF KUMQUAT, etc.].

Applicant's description of its mark was as follows: "The mark consists of a green square to the left of a black rectangle. The letter "e" is white and positioned within the green square. The letters "nterprise" are white and positioned within the black rectangle. The foregoing elements are positioned over a barrel-shaped shield design that is white outlined in black."

The Board pointed out that this description does not indicate that there are missing elements or elements that will change. Moreover, the application drawing depicts a single mark. The Board therefore reversed the phantom mark refusal.

Specimens of use: Applicant's specimen brochures are depicted immediately below:

The Examining Attorney maintained that the specimens display the mark as ENTERPRISE FLEET MANAGEMENT and design and ENTERPRISE COMMERCIAL TRUCKS and design, whereas the drawing shows the mark as ENTERPRISE and design without any additional wording. Therefore, he concluded, the mark in the drawing is not a substantially exact representation of the mark as used on the specimen, as required by Rule 2.51.

The question, then, was whether applicant had mutilated its mark, which reduced to this basic query: what exactly is a trademark? It is something that creates a separate and distinct commercial impression that indicates the source of the goods or services. The examining attorney argued that, since FLEET MANAGEMENT and COMMERCIAL TRUCKS are not generic for any particular service, the addition of this merely descriptive language clearly changes the impression of the mark.

The Board disagreed. FLEET MANAGEMENT is generic for fleet management services, and COMMERCIAL TRUCKS is at least highly descriptive of leasing and rental services. These terms not only cannot function alone as marks for applicant's services, but they also are separable from the rest of the mark. Therefore, their deletion does not change the commercial impression of the mark.

Consequently the Board found the specimens of use to be acceptable and it overruled this objection.

Read comments and post your comment here.

TTABlog note:  In support of its ruling on the specimens of use issue, the Board pointed to the ridiculous TINEL-LOCK decision, which held that a specimen of use displaying the term TR06AI-TINEL-LOCK-RING supported registration of the term TINEL-LOCK for metal rings.

Text Copyright John L. Welch 2014.


At 1:07 PM, Anonymous Rob said...

This is a very odd decision on all counts. I think the examining attorney would be well advised to seek reconsideration by an augmented panel.

At 10:19 PM, Anonymous Anonymous said...

I think the TTAB got one right for once.


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