Wednesday, May 18, 2016

Test Your TTAB Judge-Ability On This Phantom Mark Refusal

The USPTO refused registration of the mark shown below for "financial analysis and consultation," deeming it to be a phantom mark - i.e., a mark with a changeable element - and therefore unregistrable under Sections 1 and 45 of the Trademark Act. The mark comprises "the term 'XXX.XX' forming a pattern of overlapping (sic) circles. The design consists of a distinctive arrangement of numerical financial data. Each 'X' in the design represents a single digit integer, for example, 0, 1, 2, 3, 4, 5, 6, 7, 8 or 9." How do you think this appeal came out? In re Perception Options LLC, Serial No. 86104779 (May 11, 2016) [not precedential].

The Board observed that a trademark application may seek to register only one mark and must be limited to a single mark. A mark that contains a "phantom" element "is considered to comprise more than one mark and, as such, dose not provide proper notice to other trademark users." If the changeable element is limited in number of possible variations, however, the mark may be registrable. See In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807, 1812-13 (Fed. Cir. 2013) (area codes limited in number).

Examining Attorney Roselle M. Herrera contended that Applicant sought to register more than one mark because "the 'X' in Applicant's drawing refers to a changing single digit integer ...." The possible combinations are limitless, she asserted.

Applicant argued that the "coordinates of the [changeable integer] element [in the mark] create the oval design," and the visual pattern with the oval remains fixed. It analogized the integers to pixels, as in micrography or text art (see example below). Thus it sought registration for "a single mark for which the overall commercial impression is a fixed oval design."

The Board, however, found that the description of the proposed mark refers to more than one mark. There are no restrictions as to the numbers used or the combination of numbers used, or the color or font of the digits.

The commercial impression of the proposed mark will change depending on the numbers used, repeating and/or in combination, font-style, font-type, or color (or a mix of font-styles, font-types or colors) in connection with identical or varied number-strings (XXX.XX) within the oval, with resultant areas within the oval being more prominent than the oval itself.

Even if the fonts or colors are not mixed, the use of "certain number-strings in the same found can create a different commercial impression," as illustrated by Applicant's examples:

In the first and second example, the ovals engender different impressions resulting from use of 111.11 versus 666.66, that latter appearing to be bolder. In the third and fourth, using mixed number strings, certain areas of the ovals are more prominent based on placement of the numbers used in the string.

Applicant can create a varying commercial impression; the number-strings could be used in such a way to create prominent and recessive sections within the oval so as to create a design, and the design may not be perceived as simply a fixed oval or interlocking ovals as stated in the description of the mark.

The Board concluded that the ability to change the number-strings within the oval (and to change fonts and color) results in more than one mark. As a result adequate notice to the public is not provided, and the public's ability to conduct a thorough search is not possible.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? I think this mark would be registrable if applicant specified the font and color of the integers. And why do font and color matter anyway, since a standard character mark can be displayed in different fonts and colors, and a design mark without a color claim can be displayed in any color?

Text Copyright John L. Welch 2016.


At 12:22 PM, Blogger Annette Heller said...

In my opinion it is the shape that governs the mark along with the fact it included numbers. Whether the numbers were different or in bold or not does not change the overall look of the mark. Many years ago I had the issue that all of the specimens did not show the mark as applied for. The drawing of the head of a character showed the character looking to the right. Some of the specimens for a list of goods showed the character looking to the left. The Examiner refused to register for all the goods listed since some of the specimens did not match the drawing. In my opinion, this was form over substance since the character was the same.


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