The Board affirmed a refusal to register, on the Supplemental Register, the product configuration mark shown below, for "printed paper labels; paper identification tags; printed paper labels; adhesive labels; paper die cut shapes; paper labels; paper tags; placards of paper or cardboard; printed paper labels; coupons," finding that "the changeable elements in Applicant’s proposed mark result in multiple marks that cannot be protected in a single registration." In re MPT, Inc., Serial No. 86316207 (August 9, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The supposed mark consists of "four rounded, convex corners and the call-out indicator of a generally rectangular speech bubble, with the call-out indicator located at the bottom of the speech bubble and formed by an extended pointed portion connected to the lower right corner by a concave line and connected to the lower left corner by a sloped line. The broken lines in the drawing are used to show the placement of the mark and are not part of the mark." During prosecution, applicant explained that "These unclaimed portions comprise portions of the straight walls at the four sides of the label that would fix their length."

A “phantom” trademark “is one in which an integral portion of the mark isgenerally represented by a blank or dashed line acting as a placeholder for a genericterm or symbol that changes, depending on the use of the mark.” In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1515 n.1 (Fed. Cir. 1999).

A trademark application may seek to register only one mark, and a phantom mark is more than one mark. Phantom marks encompass too many possibilities to make effective searching possible, and thus do not provide proper notice to others.

Here, significantly different shapes could be created by varying the lengths and widths of the sides of this shape, demonstrating the unacceptable phantom nature of the proposed mark. (See examples below).

While Applicant’s proposed variations all may be talk bubbles, with three-dimensional configurations of the goods such as these, the form and shape of them are the essence of the mark, and Applicant’s proposed forms and shapes could diverge too much to be considered the same mark. *** More importantly, under the circumstances, Applicant’s use of broken lines in this drawing impermissibly opens the door to multiple marks, regardless of Applicant’s extraneous assurances to the contrary.

The Board also affirmed a requirement that the applicant submit a proper drawing and description of the proposed mark, because both encompass more than one mark.

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TTABlog comment: WYHA? Did applicant stand a ghost of a chance here?

Text Copyright John L. Welch 2017.