The Board affirmed refusals to register the marks NP--- and SL --- for "sealant compounds for joints," finding them to be "phantom" marks and thus ineligible for registration. The "variable designation ---" in each mark "represents up to three numeric digits." Applicant unsuccessfully maintained that, because the variable element is limited in number of combinations, the marks will be readily searchable and will provide adequate notice to other trademark users. In re Construction Research & Technology GmbH, Serial Nos. 86433989 and 86434029 (May 17, 2017) [precedential] (Opinion by Judge Wellington).
Under the Trademark Act, an application may seek registration of only one mark. "A mark that contains a changeable or phantom element resulting in possibly more than one mark is generally refused registration." In re Primo Water Corp. 87 USPQ2d 1376, 1378 (TTAB 2008). The CAFC explained the reasoning for this rule:
[T]he mark, as registered must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark. ‘Phantom’ marks . . . encompass too many combinations and permutations to make a thorough and effective search possible. The registration of such marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999).
Applicant pointed to In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807, 1813 (Fed. Cir. 2001), and In re Data Packaging, 172 USPQ 396 (CCPA 1972), in asserting that the inclusion of a phantom element does not always preclude registrability of a mark. In Dial-A-Mattress, the CAFC concluded that (212) M-A-T-T-R-E-S (the "(212)" portion of the mark being depicted in broken lines to indicate that "the area code will change") was registrable because the variable element comprised "an area code, the possibilities of which are limited by the offerings of the telephone companies." In Data Packaging, the CCPA held that a mark consisting of a colored, narrow, annular band in a specific location on a computer tape reel was registrable, even though not limited to a particular color, because "the description of [the] mark ... is neither indefinite nor unduly broad. A competing manufacturer can ascertain from reading the description of the mark ... exactly what design appellant regards as a his trademark and can govern its selection of its own mark accordingly, with no fear of inadvertent infringement." 172 USPQ at 398.
The TMEP states that a mark with a changeable element may be registrable if the element is limited in possible variations such that adequate notice is given to allow an effective Section 2(d) search. As an example, the mark T. MARKEY TRADEMARK EXHIBITION 2*** would be registrable, where the asterisks represent elements to indicate different years. TMEP Section 1214.01 (Apr. 2017).
Unlike those marks, the applied-for marks do not pass muster. One is left to guess not only what combination "up to three digits" will be used, but also "what permutations of those combinations will be used." There are at least a thousand possible marks in each case, "which is nothing if not overly broad." Moreover, it is unclear what significance, if any, each possible number combination might have. For example, they could represent "the number of a particular series or version of a product, a physical characteristic or something else of utilitarian significance to the potential consumer.
That is, Applicant is seeking to register multiple marks and the public cannot predict what marks will be covered by any resulting registrations. In sum, by way of the phantom element in each of the two applied-for marks, Applicant is improperly seeking to register not two, but over two thousand different marks and, in each case, this would be in violation of the one mark per application requirement of the Trademark Act and would run counter to the policy underlying the rule against registering phantom marks.
The marks here at issue "contrast sharply" with the mark in Dial-A-Mattress. There, "it was clear from the drawing itself" that the phantom element represented a telephone area code." [Emphasis by the Board]. Any change in area code would have no impact on the overall meaning or commercial impression. Here, however, the missing information could be much more wide-ranging than area codes, and could be interpreted differently, depending on the context.
Similarly, in Data Packaging the design mark was described with sufficient definiteness and the number of potential marks was not overly broad, so that competitors were on notice and could govern the selection of their marks accordingly.
Here, we find that if Applicant’s marks are allowed to register, there would be insufficient constructive notice to the public regarding the extent of protection that should be accorded to these marks, and the USPTO would be unable to adequately fulfill its duty to conduct searches and determine registrability of these marks.
The Board therefore affirmed the refusals under Section 1 and 45 of the Trademark Act.