Phantom of the Mark

6

October

2017

Halloween is a time for ghosts, skeletons, and… phantom marks.

A phantom mark is a registered trademark where an integral portion of a mark is represented by a blank or dashed line, which acts as a placeholder for generic terms or symbols that change depending on the use of the mark.  In other words, the mark contains a “phantom” or changeable element.  An applicant represents the changeable or “phantom” element by inserting a blank, by using dots, dashes, underlining, or a designation such as “XXXX.”  Examples include “_______ for Dummies,” a series of instruction books or Herbal Essence of XXXX, where the “XXXX” represents a type of fruit.  Other examples include marks that incorporate dates, locations, or a model number that could change.
The United States Patent and Trademark Office (“USPTO”) tends to prohibit the registration of phantom marks since it makes it difficult for a person to identify what goods or services are covered by the mark.

A few years ago, Enterprise Holdings sought to register a new version of their mark that they use for their automobile rental brand “Enterprise,” but with a slight difference. In the new version of their mark, Enterprise’s recognized green and black rectangular flag was surrounded by a modified barrel shaped pin line, creating a space below the mark where the company proposed to input other words, including “vehicle dealership,” “vehicle fleet management,” and “business consultation.” The examining attorney for the U.S. Patent and Trademark Office refused registration on the grounds that this was a phantom mark. Enterprise appealed and the Trademark Trial and Appeal Board reversed based on there being no issue that the mark Enterprise submitted also matched the description it submitted.  Since there were no elements in the description that would change, the board reversed.

Like an aging mummy, the use of phantom marks has changed over time.  Phantom registrations used to be accepted by the USPTO more frequently but, the USPTO began to examine phantom marks with heavier scrutiny since the mid-1990s.  In 1999, the Court of Appeals for the Federal Circuit explained that a trademark registration’s purpose is to put the public on notice of a registrant’s ownership over a particular mark.  In order for this notice to be meaningful, the registered mark must accurately reflect the actual mark that is actually being used in commerce.  A phantom mark frustrates this purpose because its changing elements offer too many combinations to make a thorough and effective trademark search possible.  Additionally, phantom marks usually result in the registration of more than one mark which effectively violates the requirement in the Trademark Manual of Examining Procedure that “a trademark application may only seek to register a single mark.”  The main issue is that registration of a phantom mark does not provide sufficient notice to competitors and the public.

Don’t let phantom marks scare you away too quickly.  While the name might sound frightening, its use can be advantageous in limited cases.  Registering a phantom mark can be beneficial because rather than register several variations of a mark, an applicant can rely on the one phantom mark and claim exclusive rights not just on the combinations in use, but to other potential combinations. One company that does this is Levi’s with their famous sewn-cloth tab on Levi Strauss’s jeans.

While your intellectual property attorney cannot protect you from ghosts and skeletons, they may be able to spare you a fright when it comes to Phantom Marks.

[This article was prepared and written by Ashley Winslow, our intellectual property rookie. Based on an original story in the Trademark and Copyright Blog – http://www.trademarkandcopyrightlawblog.com]

Phantom of the Mark

time to read: 4 min