Foamation is the company to blame for the flood of the Cheesehead products commonly enjoyed by Green Bay Packer fans. But soon they may not be the only one as the “essence” of its products has failed to achieve trademark protection.

According to the company’s website, the idea for the Cheesehead novelty hat was born in 1987. The company holds a trademark registration for the hat which was issued in 1997. A registration was obtained for other hat designs, including fezzes, turbans, and berets, in 1998. And they produce a variety of other products including ties, ear muffs, footballs, flying discs, belts, coasters, beverage holders and Christmas tree ornaments all of which are made of foam that emulates cheese.

While this company has undoubtedly been successful, it has recently faced issues when attempting to register what it claims is the essence of its products: the cheese design.

On July 30, 2012, an application was filed and described as “mark consist[ing] of the color yellow/gold and a pattern of pock marks which are circular or oval-shaped depression[s] applied to the entire surface of the goods in a manner evoking the appearance of cheese.”

The proposed mark was initially denied in an Office Action dated Dec. 4, 2012. The denial was based on the examiner’s assertion that this is a phantom mark, “a mark that contains a changeable or ‘phantom’ element.”

The USPTO describes “phantom” elements as parts of a mark that are “subject to change.” While there are many variations, common examples include “marks incorporating a date (usually a year), a geographic location, or a model number that is subject to change.” Phantom marks are typically denied under 15 U.S.C. §1051 and 1127 because it is viewed as attempted registration of more than one mark. “Marks with phantom elements provide insufficient notice to potential consumers and businesses as to what the mark consists of when it is in actual use in commerce.”

The Court of Appeals for the Federal Circuit made it clear that phantom marks should not be registerable in the 1999 decision of In re International Flavors and Fragrances. In its application, the company attempted to register a mark with placeholders that would be filled in with a variety of words described as a “number of flavors or scents of herbs, fruits, plants or vegetables” (i.e., “Living XXXX Flavor” could become “Living Cucumber Flavor,” “Living Cherry Flavor” or “Living Basil Flavor”). The court rejected the application stating that it attempted to register more than one mark.

Foamation filed a Response to this Office Action on May 16, 2013 arguing against the phantom mark classification. It asserted that “no element of the applied-for mark is ‘missing or subject to change.’” The response provides examples of 12 registered marks that “are comprised of inconsistent design patterns applied to the surface of goods” and argues that regardless of the fact that the pock mark pattern is not uniform or repeating, the design is still registrable.

Again, on July 9, 2013, the examiner denied the registration. This time, three different grounds for refusal were cited. In regards to a Multiple Marks Refusal, the examiner stated that “the applicant is trying to register a concept, and not an actual single mark.” In support of an Ornamental Refusal, the examiner wrote “the applied-for mark as used on the specimen of record (1) is merely a decorative or ornamental feature of the goods; and (2) does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.” The third ground for refusal was the Mark Differs on Drawing and Specimens. According to the examiner, “the specimen displays the mark as a pattern of pock/holes; and the drawing shows the mark as pattern of pock/holes in different sizes and location.”

Foamation again disagreed with the examiner’s assertions in a Response dated Aug. 2, 2013. It stated that the new refusals seemed to be “a different way of characterizing the phantom mark refusal that was withdrawn.” It restated all of its previous arguments and once more included the 12 examples of similar marks that had been registered.

The third ground for refusal seems to be the easiest for Foamation to rebut, however they have not taken any action to do so. The examiner has clearly pointed out that the position of the pock marks is different on the specimen provided and the drawing. By not responding with additional drawings and/or specimens (which were requested by the examiner), it appears that Foamation is trying to avoid committing to having the pock mark appear in the same exact location on each product or having any type of consistent marking.

A Final Office Action was issued on Oct. 3, 2013 that again denied the registration. Foamation has six months in which it can “submit a response that fully satisfies all outstanding requirements” or it can appeal to the Trademark Trial and Appeal Board. So the fate of this registration remains hanging in the balance.

This ruling has potentially opened the door for other companies looking to break into this market. Foamation will likely continue to fight to protect its market share and the brand that it has built.

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