Friday, May 19, 2017

Precedential No. 12: Return of the Phantom Mark Refusal

The Board affirmed refusals to register the marks NP--- and SL --- for "sealant compounds for joints," finding them to be "phantom" marks and thus ineligible for registration. The "variable designation ---" in each mark "represents up to three numeric digits." Applicant unsuccessfully maintained that, because the variable element is limited in number of combinations, the marks will be readily searchable and will provide adequate notice to other trademark users. In re Construction Research & Technology GmbH, 122 USPQ2d 1583 (TTAB 2017) [precedential] (Opinion by Judge Wellington).

Under the Trademark Act, an application may seek registration of only one mark. "A mark that contains a changeable or phantom element resulting in possibly more than one mark is generally refused registration." In re Primo Water Corp. 87 USPQ2d 1376, 1378 (TTAB 2008). The CAFC explained the reasoning for this rule:

[T]he mark, as registered must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark. ‘Phantom’ marks . . . encompass too many combinations and permutations to make a thorough and effective search possible. The registration of such 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. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999).

Applicant pointed to In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807, 1813 (Fed. Cir. 2001), and In re Data Packaging, 172 USPQ 396 (CCPA 1972), in asserting that the inclusion of a phantom element does not always preclude registrability of a mark. In Dial-A-Mattress, the CAFC concluded that (212) M-A-T-T-R-E-S (the "(212)" portion of the mark being depicted in broken lines to indicate that "the area code will change") was registrable because the variable element comprised "an area code, the possibilities of which are limited by the offerings of the telephone companies." In Data Packaging, the CCPA held that a mark consisting of a colored, narrow, annular band in a specific location on a computer tape reel was registrable, even though not limited to a particular color, because "the description of [the] mark ... is neither indefinite nor unduly broad. A competing manufacturer can ascertain from reading the description of the mark ... exactly what design appellant regards as a his trademark and can govern its selection of its own mark accordingly, with no fear of inadvertent infringement." 172 USPQ at 398.

The TMEP states that a mark with a changeable element may be registrable if the element is limited in possible variations such that adequate notice is given to allow an effective Section 2(d) search. As an example, the mark T. MARKEY TRADEMARK EXHIBITION 2*** would be registrable, where the asterisks represent elements to indicate different years. TMEP Section 1214.01 (Apr. 2017).

Unlike those marks, the applied-for marks do not pass muster. One is left to guess not only what combination "up to three digits" will be used, but also "what permutations of those combinations will be used." There are at least a thousand possible marks in each case, "which is nothing if not overly broad." Moreover, it is unclear what significance, if any, each possible number combination might have. For example, they could represent "the number of a particular series or version of a product, a physical characteristic or something else of utilitarian significance to the potential consumer.

That is, Applicant is seeking to register multiple marks and the public cannot predict what marks will be covered by any resulting registrations. In sum, by way of the phantom element in each of the two applied-for marks, Applicant is improperly seeking to register not two, but over two thousand different marks and, in each case, this would be in violation of the one mark per application requirement of the Trademark Act and would run counter to the policy underlying the rule against registering phantom marks.

The marks here at issue "contrast sharply" with the mark in Dial-A-Mattress. There, "it was clear from the drawing itself" that the phantom element represented a telephone area code." [Emphasis by the Board]. Any change in area code would have no impact on the overall meaning or commercial impression. Here, however, the missing information could be much more wide-ranging than area codes, and could be interpreted differently, depending on the context.

Similarly, in Data Packaging the design mark was described with sufficient definiteness and the number of potential marks was not overly broad, so that competitors were on notice and could govern the selection of their marks accordingly.

Here, we find that if Applicant’s marks are allowed to register, there would be insufficient constructive notice to the public regarding the extent of protection that should be accorded to these marks, and the USPTO would be unable to adequately fulfill its duty to conduct searches and determine registrability of these marks.

The Board therefore affirmed the refusals under Section 1 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: Suppose the digits had to be in a certain color? Would that make a difference?

Text Copyright John L. Welch 2017.


At 9:01 AM, Blogger Mike said...

"Suppose the digits had to be in a certain color? Would that make a difference?"

Actually, it probably would. Based on this opinion, my guess is that if the mark had specified the three digits rather than leaving them variable, but also specified that they were to be printed in some shade of red, it would not have been found to be a phantom mark.

At 11:18 AM, Anonymous Anonymous said...

Not sure that color would make a difference. Color is only rarely a material element of a mark and the PTO routinely permits applicants to delete color in a mark. For color to be a material element of a mark it would likely need to covered by a 2f in part claim. If the mark doesn't specify the three digits then it potentially covers 1000 variants. Color or no color if the digits aren't specified it's a phantom mark.

At 11:49 AM, Anonymous Anonymous said...

I think the Board's argument is reasonable.

NP 777 (for good luck) or NP 316 (for churches) are qualitatively different marks from NP 365 (guaranteed to last a year), NP 500 (comes in a 500g tube), NP 042 (claimed to be the favorite sealant of Jackie Robinson), or NP 711 (to be sold at convenience stores).

At 12:04 PM, Blogger Raza Siddiqui said...

Once they specify the digits and irrespective of if they color code it or not, it is no longer a phantom mark anyways. But the applicant's intention clearly seems to get all combinations beginning from 001 to 999 following NP/SL.

So what if they apply for NP 101 and then a third party applies for NP 501, wouldn't that meet a 2(d) anyhow for similar or related goods, why bother filing for a phantom mark? The same applies even if each party here color codes it differently, it should still be seen as likely to cause confusion.

IMO, the decision is right. One mark per application. You can't fit 1000 into one.

At 1:36 PM, Blogger RT said...

I agree with the decision but I'm bemused by the comparison to T. MARKEY EXHIBITION 2***, since there are also 1000 variations on that.

At 1:20 PM, Anonymous Anonymous said...

If the plan was to save money, then for the cost of this appeal they could have refiled and registered for all the combinations they are using. They could not amend the application because the examiner presaged such a change would be a "material change."

Now 3 years have passed and they have not refiled anything. I would have refiled immediately to be safe.

There were two NP specimens - NP1 and NP 150. The other was SL2.

Interestingly, the specimens show the owner as BASF, not the company that filed the applications.

At 11:43 AM, Anonymous Anonymous said...

RT, the difference between the instant mark and the T. MARKEY example is that it is clear from the drawing page that 2*** represents a year. It's immaterial how many variations. Personally, I think the policy that phantom marks may be registered is silly. If the mark has any phantom element it should be refused. And, what do we do about disclaimers, or drawing-matching-specimen issues? E.g. in Anonymous 11:49's example, the "500" version would require a disclaimer, but the "777" version would not. And I'd be concerned with 2d issues on the "711" mark, assuming goods/services overlapped. And, clearly, a drawing with "XXXX" on it does not match a specimen that shows "2***". Just my XX cents.


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