Originally published in the INTA Bulletin on August 15, 2016
In a non-precedential but illuminating opinion, the U.S. Trademark Trial and Appeal Board (TTAB) recently affirmed a refusal to register a "phantom mark" consisting of the element "XXX.XX" forming a pattern of overlapping circles (pictured below). In re Perception Options LLC, Serial No. 86104779 (T.T.A.B. May 11, 2016). Each "X" in the proposed mark could represent a single digit numeral from 0 to 9. The TTAB agreed with the examining attorney that the potential variations of numerals used would create distinct and different commercial impressions. The decision helps to clarify the ability of U.S. applicants to register marks containing variable elements.
Under U.S. law, a single trademark application must be limited to only one mark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.52. Section 1214 of the Trademark Manual of Examination Procedures provides that a mark with a changeable or "phantom" element should be denied registration if "the element encompasses so many potential combinations that the drawing would not 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." In one case, registration of the proposed mark "LIVING xxxx" was refused, where "xxxx" referred to a specific herb, plant fruit, or vegetable. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361 (Fed. Cir. 1999). In another case, "(XXX) M-A-T-T-R-E-S" was registerable because the number of possible telephone area codes was limited. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001).
In re Perception Options, the applicant sought to register the mark depicted above for "financial analysis and consultation" in International Class 36. The examining attorney refused registration, finding that the applicant sought to register more than one mark. The examining attorney asserted that the commercial impression of the mark would change depending on whether the "XXX.XX" term were replaced with various numerals, such as all "111.11," all "666.66," all "000.00" on the left half and all "111.11" on the right, and so on.
Affirming the refusal, the TTAB held that the applicant sought registration of more than one mark. Although the coordinates of the numerals were fixed in the form of overlapping circles, the TTAB explained, "there are no restrictions as to the numbers used or combination of numbers used, or the manner in which the numbers 0‒9 can be displayed within the oval." The commercial impression of the mark would change based on the chosen numbers. The TTAB reasoned that different areas within the proposed mark would become more or less prominent, and more prominent than the oval itself depending on the integers, colors, font style, and font type chosen for each "XXX.XX" term. The varying patterns made a search of all possible combinations impossible and could not provide adequate notice to the public, and, accordingly, registration was refused.
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This article first appeared in the INTA Bulletin on August 15, 2016.
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