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What is a phantom mark?

Updated: Oct 25, 2021

What better time than Halloween to talk about phantom marks? If you file for one, you’ll be living out your very own horror story. Here’s an explanation of what they are and how to avoid being haunted by them.

If you try to register a mark with the USPTO that has a significant changeable element, you may receive a phantom mark refusal. Although there are many types of changeable elements, this comes up most often when the applicant wants to include years or geographic locations in the mark but wants the freedom to use different years or locations depending on the circumstances. These changeable elements are sometimes also called “phantom” elements. The problem boils down to this: in the U.S., a single application can be used to register only a single mark. If you apply for a phantom mark, you are trying to get around this rule by using a single application to register multiple different marks.

For example, the USPTO issued a phantom mark refusal when an applicant tried to register the mark SHAPE XXX and indicated that “XXX” was a placeholder for “the unabbreviated name of a state of the United States and Puerto Rico.” Similarly, the USPTO issued a phantom mark refusal for 3 applications to register LIVING XXX, LIVING XXX FLAVOR, and LIVING XXX FLAVORS where “XXX” was a placeholder for “a specific herb, fruit, plant or vegetable.” In both cases, the various possible combinations did not represent a single mark.

This does not mean that all applications with changeable elements are doomed. Two key questions can help when analyzing whether a mark with a changeable element is a phantom mark.

First, does the description of the mark provide enough information so that others can perform an effective search for conflicting marks? Every application filed with the USPTO is reviewed by an Examining Attorney. As part of that review process, they must perform a search for conflicting marks (marks so close to the applied-for mark that consumers are likely to be confused about the source of the products or services provided under those marks). The search is arguably the most important and complicated part of the review process. If a newcomer applies for a mark that is too close to someone else’s registered mark, the USPTO Examining Attorney must refuse registration to the newcomer. That is one of the benefits of having a federal trademark registration: no one else should be able to register a mark in the U.S. that’s confusingly similar to yours. So it’s critical that the Examining Attorney has enough information about all of the mark elements to perform a thorough search. This helps to explain part of the problem with a mark like LIVING XXX FLAVOR. The Examining Attorney simply doesn’t have enough information to conduct a meaningful search. They know they need to search for variations of the words LIVING and FLAVOR, but exactly which herbs, fruits, plants, or vegetables should be included in their search?

A second key question is whether the public has enough information to avoid infringement. One purpose of a trademark registration is to put the public on notice of what wording, design elements, etc. you are claiming as your mark. This prevents someone who is infringing your trademark from arguing that the misappropriation was innocent. But this purpose can only be achieved if there is enough information in the registration to make the public aware of exactly what mark the owner owns. Another way to look at the problem with phantom marks is that if they were allowed to register, it would not be clear to the public exactly what was claimed in the mark. If a different company wanted to use a mark with certain similarities to a registered phantom mark, that company might not be able to tell from a review of the registration whether their use would be legal or infringing.

Ultimately, phantom marks are definitely more trick than treat. If you're faced with this type of refusal or suspect you have a phantom mark, you'll want advice from an experienced trademark attorney.

This information was posted on October 23, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.

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