We Ain’t Afraid of No Ghosts ~ Is Your Trademark Vulnerable

The U.S. Patent and Trademark Office (USPTO) continues to grace us with clarity on what constitutes a “phantom” trademark—and the effect is only slightly less scary than the Stay Puft Marshmallow Man. The Trademark Manual of Examining Procedure (“TMEP” or the “Trademark Bible”) states that a phantom element is “a word, alpha-numeric designation, or other component that is subject to change” as part of a mark. The most common examples include a date, a location, or a model number that is subject to change.

Generally, a trademark that contains a changeable characteristic is refused registration because the mark is, in essence, multiple marks. Logically, this makes sense—it isn’t fair to all you trademark warriors out there fighting to register a single word mark or design.

However, the USPTO does allow certain marks with phantom elements to register “if the element is limited in possible variations such that adequate notice is given to allow an effective Section 2(d) [likelihood of confusion] search.” Clearly, this leaves room for interpretation. (And that, my friends, demonstrates why attorneys exist.)

If you are considering whether to include one of these poltergeist elements in your mark, or have been issued a phantom mark refusal, who ya gonna call (I’m sorry, I had to)?  

The following tips attempt to help you be the Dr. Peter Venkman of phantom trademark refusals (again, I had to):

• Of course, the safest option is to choose a mark with no phantom elements. Choose a mark that represents your brand, but does so without needing amending or changing.
• If you really, really need that changeable element, make sure that the phantom element is readily identifiable from the context of the mark. The TTAB recently denied registration to a company trying to register the marks “NP***” and “SL***: where the asterisks were variable number combinations. The Board found that “[b]ecause the marks’ possible range of meanings is not readily clear from the context…Applicant is seeking to register multiple marks and the public cannot predict what marks will be covered by any resulting registrations.” The Board held that the missing numbers could potentially represent numbers in a series of products, different versions of the product, or some other physical characteristic. If it is unclear from the unchanging portion of your trademark what the phantom element refers to, that is a red flag for a phantom trademark refusal.
• Be sure that the changeable element is limited in the scope of possibilities. In the famous case In re Dial-A-Mattress Operating Corp., the Applicant attempted to register a three number phantom sequence in a phone number. The court held that because the possibilities of number sequences were finitely and manageably limited, the phantom sequence was registerable. (Not to mention that what the phantom element represented was readily identifiable from the context of the mark).
• Don’t claim the phantom element as a part of the mark. For design marks, the phantom element cannot be integral to the mark. In June 2017, a trademark Applicant sought to register a design of the U of Miami ibis mascot wearing a hat and a blank sweater. The Examining Attorney alleged that the sweater “operates as a blank slate for whatever additional elements the applicant, in its sole discretion, sees fit to include.” Applicant stated that he sometimes placed “University of Miami,” “Miami,” or “U of Miami” (among a few others) on the sweater; and he argued that like Dial-A-Mattress, the combinations of what to put on the sweater were limited.  The TTAB held that the test for a phantom design element is whether or not the changeable element of the design is “integral to the Applicant’s mark;” and found that the wording put on the sweater was not. Because Applicant did not apply to register a series of marks; because the letterings on the specimens were not generic, but rather “independent indicators of source;” and because Applicant did not claim rights to those literal elements, the Board found that Applicant did not seek to register a phantom, or multiple, marks.

So, if you have a design mark and you want to add a star for every year you’ve been sober, little chick feet for every Grammy you win, or leave a portion of the design blank to put an initial or monogram, then you will likely be in the clear (as long as the design itself can stand on its own as distinct).

• Avoid mark mutilation. It sounds brutal, I know, and the TTAB views it as such. Mark mutilation occurs when a portion of the composite mark is “severed” and the applicant attempts to register only that severed portion. For example, the Examining Attorney in Miami claimed that the Applicant had mutilated the ibis (yikes) by severing the accompanying logo and stripes on the sweater and attempting to register the mark without it. The TTAB disagreed and pointed to several examples of marks allowed to register without some portion of the specimen, including a monster truck design without the accompanying JURASSIC ATTACK logo that appeared in the specimen submitted.

The key is to determine whether your mark, aside from the changeable element, has a distinct commercial impression on its own. The Board held that the ibis did.

As we all know, these analyses are highly subjective and up to the discretion of the Examiner. However, including these ghost-busting tools in your arsenal can greatly reduce the possibility of a phantom refusal.

By Suzan Hixon and Bethany Gaal Patty