In the spirit of Halloween, this post will be about the ghostly subject of phantom marks.
Generally, a trademark application filed in the United States may seek registration of only one mark. This is not always the case in other countries. For example, in the United Kingdom, Australia, and Hong Kong, it is possible for a single trademark application to cover a series of marks if they are sufficiently similar and meet certain criteria.
In the United States, federal trademark applications may cover only a single mark for policy reasons. First, the application must provide sufficient constructive notice to third parties about the nature of the mark. Second, the application must turn up in response to a thorough and effective search.
When an application is filed seeking to register a mark with a component that is subject to change the United States Patent and Trademark Office (the “PTO”) must decide whether the variable element covers so many different combinations that the policies mentioned above would be undermined. If so, the PTO will refuse to register it as a phantom mark.
However, the PTO may register marks that have variable or changeable elements so long as the changeable element can only yield a limited in the number of possible variations of the mark, the drawing provides adequate notice to third parties, and the drawing permits adequate searching. For example, noting that an element of the mark must be a contrasting color, an area code, or a year might be sufficiently limited to allow someone conducting a search to encounter the application and analyze the drawing.
Eerily, I mean, earlier this year, the PTO refused registration of two applications seeking registration of phantom marks. In re Construction Research & Technology GmbH, 122 USPQ2d 1583 (TTAB May 17, 2017)(precedential). One sought registration of the mark NP— and the other sought registration of the mark SL—, both for sealant compounds for joints. The applications noted that the dashes in the drawings were intended to represent one or more different alphanumeric characters or other symbols. Below are specimens filed with the applications that allow one to see how the marks are used in commerce:
As filed, the applications could cover over one thousand marks. Moreover, it was not clear not clear what significance the numbers would have. This is gave the public inadequate notice of the extent of protection afforded the marks and would not permit adequate searching. Accordingly, the PTO refused registration for both applications.
Don’t let the specter of phantom marks spook you this Halloween season. Rather, work with your trademark attorney to determine whether you can file an application to seek registration of a single mark with limited variable elements, or will need to file a separate application for each variation.