Precedential No. 26: TTAB Affirms Phantom Mark Refusal of "SHAPE XXXX" for Educational Journals

The Board affirmed a refusal to register SHAPE XXXX for educational publications and services on the ground that the term is a phantom mark that comprises more than one mark. A miscellaneous statement in the application indicated that "[t]he 'XXXX' in the mark denotes the unabbreviated name of a state of the United States and Puerto Rico." The crux of the issue was whether all permutations of SHAPE XXXX legally constitute "one mark." In re Society of Health and Physical Educators, 127 USPQ2d 1584 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Under the Trademark Act, “a trademark application may only seek to register a single mark.” In re Int’l Flavors & Fragrances, Inc., 51 USPQ2d 1513, 1516 (Fed. Cir. 1999). A mark that contains a changeable or phantom element resulting in more than one mark must be refused registration. In re Primo Water Corp., 87 USPQ2d 1376, 1378 (TTAB 2008). One reason for this rule is that a trademark registration must provide adequate notice to potential users of the same or a similar mark. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d at 1517-18 ("The registration of such [phantom] 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.") Whether a changeable element is permissible depends on whether the various possibilities represent a single mark. Id. at 1517.

In Int’l Flavors & Fragrances, the CAFC found that the mark LIVING XXXX FLAVORS violated the one-mark-per-application requirement. The application stated that the variable element "XXXX" "indicated 'a botanical or extract thereof, to wit: ‘flower’, ‘fruit’, ‘yellow sunset orchard’, ‘osmanthus’, ‘fragrance’, ‘raspberry’ and the like,” because the variable element encompassed too many combinations and permutations to make constructive notice meaningful." Recently, in In re Constr. Research & Tech. GmbH, 122 USPQ2d 1583 (TTAB 2017), the TTAB found the marks NP - - - and SL - - - , in which the variable element “represents up to three numeric digits,” to be phantom marks, in part because the possible range of meanings that could arise from the digits was unclear.

In contrast, the CAFC found the mark 1-888-M-A-T-R-E-S-S to be the legal equivalent of the mark (212) M-A-T-T-R-E-S, in which the term (212) was defined as a changeable element: "it is apparent . . . that the missing information in the mark is an area code, the possibilities of which are limited by the offerings of the telephone company." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1813 (Fed. Cir. 2001). (Dial-A-Mattress I). The Board, in a case involving the mark 1-800-MATTRESS (the numerals representing a changeable area code), reversed a phantom mark refusal, stating "[i]t is immediately apparent that the phantom portion consists of a three-number combination which is an area code. There is no ambiguity. It is a telephone mnemonic." In re Dial-A-Mattress Operating Corp., Serial No. 76290744, 2004 WL 1427390, at *3 (TTAB June 15, 2004) (nonprecedential). (Dial-A-Mattress II).

Together, these decisions teach that when an applicant seeks to register a mark with a variable element, we must decide whether the permutations of the variable element affect the commercial impression so as to result in more than one mark. Put differently, if such a mark is to be registered, the possible variations of the mark must be legal equivalents. See Dial-A-Mattress I, 57 USPQ2d at 1813 (“Although the registration of the ‘(212) M-A-T-R-E-S-S’ mark is a ‘phantom’ mark, … ‘1-888-M-A-TR-E-S-S’ is the legal equivalent of the ‘(212) M-A-T-T-R-E-S-S’ mark.”); Dial-A-Mattress II, 2004 WL at 1427390, *4 (1- --- --- --- -MATTRESS was approved for registration because, inter alia, the different variations of the mark were legal equivalents).

Here, the applied-for mark is capable of 51 variations. Although the scope or definition of the variable element is specified in the subject application at issue (in a "miscellaneous statement" that would not appear on any registration certificate), that statement "only confirms that this application is not for a single mark and that this variation would inhibit effective searching because the 51 geographic locations are not listed in any searchable portion of the application." [The Board noted that even if the 51 locations were stated in the description of the mark, that field "is not generally searched when looking for similar marks."].

The crux of the issue, however, is whether all permutations of SHAPE XXXX, where XXXX is a state name or Puerto Rico, may be considered to be one mark (e.g., whether SHAPE MICHIGAN is the same mark as SHAPE OHIO).

Two marks are the "same marks" if they are legal equivalents. "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. Whether marks are legal equivalents is a question of law …. No evidence need be entertained other than the visual or aural appearance of the marks themselves. Dial-A-Mattress I, 57 USPQ2d at 1812 (citing Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991)."

[I]n a phantom mark in which the changeable elements are arbitrary or fanciful, it is correspondingly likely that the various permutations of the mark will result in different commercial impressions and therefore constitute different marks. In contrast, where the changeable elements are generic or merely descriptive, it is conceivable that the permutations of the mark may constitute a single mark. However, there can be no hard and fast rule, because even generic and descriptive matter may contribute to the commercial impression of a mark in certain circumstances.

The Board found that SHAPE XXXX is not one mark because the different permutations thereof are not legal equivalents.

Even though geographic terms are generally considered not to be inherently distinctive, they are capable of acquiring distinctiveness. Thus, for example, SHAPE MICHIGAN signifies educational services emanating from Michigan while SHAPE OHIO signifies services emanating from OHIO. The distinction is important in this case where geographic terms are capable of acquiring distinctiveness, which would further distinguish the marks.

Each variation of SHAPE XXX would have a different appearance and pronunciation. The range of variation is "undoubtedly broader" than that of the three-digit variable area code of the Dial-A-Mattress cases. Even though there may be more area codes than the number of states plus Puerto Rico, "the area codes were not only numerical and fixed in length, but also were part of a telephone number mnemonic, and so varied less in appearance and pronunciation. See, e.g., Dial-A-Mattress II, 2004 WL 1427390, at *3."

The Board also noted that applicant conceded that it had not yet used SHAPE XXXX with all 51 variations of state names and Puerto Rico. "This emphasizes the problem with Applicant’s phantom mark application, as it has filed a use-based application where all the variations of the changeable element are not in use." [Were all the Dial-A-Mattress area codes in use? - ed.].

And so the Board affirmed the refusal.

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TTABlog comment: On its face, the 1-XXX-M-A-T-T-R-E-S-S mark tells you that the variable element is an area code. SHAPE XXXX, on its face, tells you nothing about what the XXXX might be. What other variable marks might pass muster? When XXXX is a year? How about THE TOP TEN TTAB DECISIONS OF 20XX?

Text Copyright John L. Welch 2018.