"Phantom marks" are trademarks that contain a variable element, such as the mark T.MARKEY TRADEMARK EXHIBITION 2***, in which the asterisks represent elements that change to indicate different years. Trademark Manual of Examining Procedure (TMEP) § 1214.01 (Apr. 2017). While a phantom mark refusal would not be necessary in this example, the Trademark Office generally refuses the registration of phantom marks because they fail to "give adequate constructive notice to third parties as to the nature of the mark and a thorough and effective search for conflicting marks is not possible." TMEP § 1214.01. Additionally, phantom marks often result in the registration of more than one mark, violating the requirement that "a trademark application may only seek to register a single mark." Id. at § 807.01 (emphasis added).
The Trademark Trial and Appeal Board (TTAB) recently issued a precedential decision that clarifies the types of phantom marks that are registrable. In re Construction Research & Technology GmbH, Serial Nos. 86433989 and 86434029 (May 17, 2017 TTAB). In Construction Research, the Applicant sought to register the phantom marks "NP—" and "SL—," where the "—" represented three numbers, for "sealant compounds for joints." *1. The Board found that the phantom elements were overly broad and indefinite, and affirmed the Examining Attorney's rejection.
The Applicant in Construction Research argued that the applied for marks, "NP—" and "SL—," provided adequate notice for trademark searching purposes because there were a limited number of numeric combinations. *2-3. It relied upon In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001), where the Federal Circuit found that the phantom element, (212), in the mark (212) M-A-T-T-R-E-S, Reg. No. 1,589,453, was a permissible phantom element because it was "an area code, the possibilities of which are limited by the offerings of the telephone companies." The Applicant noted that the missing numbers could theoretically have the same number of combinations and permutations as a phantom three-digit area code found registrable in In re Dial-A-Mattress. *6.
The TTAB, however, agreed with the Examining Attorney, finding that depending on the number combinations there could be at least 1,000 possible marks. Further, 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." Id. While theoretically the phantom elements would have the same number of combinations as the area code in In re Dial-A-Mattress, given that the Applicant failed to provide any context as to the meaning of the phantom element "—" (i.e., product series, product version or physical characteristic), the phantom element in the applied-for marks could be much broader than actual area codes. Id.
The TTAB's decision in Construction Research offers some clarity that phantom marks are registrable only if the range of phantom possibilities is limited in scope and readily identifiable from the context of the applied-for mark. Applicants can try to avoid a phantom problem altogether by seeking to register the non-variable elements of the phantom marks.
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