The PTO vs. The Phantom Marks: A Ghost Story

Don't read this one before bed.

As autumn sets in and Halloween approaches, my mind turns to jack-o-lanterns, skeletons, and phantoms. Phantom marks, that is. Equally incorporeal though perhaps somewhat less frightening than their ghostly namesakes, phantom marks are registered trademarks that contain a "phantom," or changeable, element. A well-known phantom registration was _ _ _ _ _ _ FOR DUMMIES for various self-help books, where the dotted line represented different descriptive terms that vary according to the subject matter of the book. A hypothetical example of a phantom mark is JOSH'S DELICIOUS xxxxx WINE for wine, where the "xxxxx" represents a type of fruit. Other examples include marks incorporating a date, a geographic location, or a model number that is subject to change.

It's easy to see why a phantom registration would be desirable. Rather than spend the money to register a host of variations on a theme, an applicant could rely on a single phantom mark. And once the mark is registered, a registrant could claim exclusive nationwide rights, not just to the combinations in use, but to every potential combination, including those that may never be used.

Ghostbusters

Phantom registrations were, for many years, accepted by the United States Patent & Trademark Office (PTO). Starting in the mid-1990s, however, the PTO began to view phantom marks with greater scrutiny, sometimes refusing to register such marks on the grounds that they violated the rule that an applicant may apply for only one mark in a single trademark application. See Trademark Manual of Examining Procedure (TMEP) § 807.

In 1999, the Court of Appeals for the Federal Circuit (CAFC) blessed the PTO's scrutiny, upholding the PTO's refusal of the marks LIVING xxxx, LIVING xxxx FLAVOR, and LIVING xxxx FLAVORS for essential oils, flavors, and fragrances, where "xxxx" stood for a particular herb, fruit, plant, or vegetable. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999). The CAFC explained that, under 15 U.S.C. §1072, registration serves as constructive notice to the public of the registrant's ownership of the mark. In order to make this constructive notice meaningful, the mark as registered must accurately reflect the actual mark used in commerce, so that anyone searching the register for a similar mark will locate the registration. A phantom mark is not able to serve this function because its variable elements encompass far too many...