Single Application May Seek Registration of Only One Mark

If an application seeks registration of a mark with a

significant changeable or "phantom" element, the examining attorney must consider

whether the element encompasses so many potential combinations that the drawing

would not give adequate constructive notice to third parties as to the nature of the

mark and a thorough and effective search for conflicting marks is not possible. If

so, the examining attorney must refuse registration under §§1 and 45 of the

Trademark Act,

15 U.S.C. §§1051

and

1127

, on the ground that the application seeks registration

of more than one mark.

See

In re Int'l Flavors & Fragrances Inc.

, 183 F.3d 1361, 51

USPQ2d 1513 (Fed. Cir. 1999);

In re Soc’y of Health & Physical

Educators

, 127 USPQ2d 1584 (TTAB 2018);

In re Constr.

Research & Tech. GmbH

, 122 USPQ2d 1583 (TTAB 2017);

In re Primo Water

Corp.

, 87 USPQ2d 1376

(TTAB 2008);

see also

TMEP §807.01

(regarding the requirement that an

application be limited to one mark).

In

International Flavors,

the

applicant filed three applications to register the designations "LIVING xxxx,"

"LIVING xxxx FLAVOR," and "LIVING xxxx FLAVORS," for essential oils and flavor

substances. The applications indicated that "the ‘xxxx’ served to denote 'a specific

herb, fruit, plant or vegetable.'"

Int’l Flavors

, 183 F.3d at

1363-64, 51 USPQ2d at 1514-15. In upholding the refusal of registration, the Federal

Circuit noted that under §22 of the Trademark Act,

15 U.S.C.

§1072

,  registration serves as constructive notice to the

public of the registrant’s ownership of the mark and, therefore, precludes another

user from claiming innocent misappropriation as a trademark infringement defense. To

make this constructive notice meaningful, the mark as registered must accurately

reflect the mark that is used in commerce, so that someone who searches the register

for a similar mark will locate the registration

tive notice to the

public of the registrant’s ownership of the mark and, therefore, precludes another

user from claiming innocent misappropriation as a trademark infringement defense. To

make this constructive notice meaningful, the mark as registered must accurately

reflect the mark that is used in commerce, so that someone who searches the register

for a similar mark will locate the registration. The court stated that "phantom

marks" with missing elements "encompass too many combinations and permutations to

make a thorough and effective search possible" and, therefore, the registration of

these marks does not provide adequate notice to competitors and the public.

Id.

at 1367-68, 51 USPQ2d at 1517-18.

In Soc’y of Health & Physical

Educators

, the Board affirmed a refusal of the standard-character mark

SHAPE XXX, in which "XXX" was intended to denote "the unabbreviated name of a state

of the United States and Puerto Rico."

In re Soc’y of Health & Physical

Educators

, 127 USPQ2d at 1585. The Board noted that the registrability

of a mark with a variable element depends on "whether the permutations of the

variable element affect the commercial impression so as to result in more than one

mark."

Id.

at 1587. Thus, for such a mark to register, the "the

possible variations of the mark must be legal equivalents."

Id.

The Board found that, while the variable element in the applied-for mark was

geographically descriptive, it nonetheless "alters the characteristics of the

purported mark SHAPE XXXX, resulting in the commercial impression of multiple marks"

and that "[t]he differences in the variable elements are more than minor variations

or inconsequential modifications of the basic mark."

Id.

at 1589

(noting that the variable terms have different meanings, sounds, and appearances,

and may also acquire distinctiveness). Accordingly, the Board determined that "the

different permutations of SHAPE XXXX are not legal equivalents" and therefore the

mark comprised more than one mark.

Id.

at 1588, 1590

ents are more than minor variations

or inconsequential modifications of the basic mark."

Id.

at 1589

(noting that the variable terms have different meanings, sounds, and appearances,

and may also acquire distinctiveness). Accordingly, the Board determined that "the

different permutations of SHAPE XXXX are not legal equivalents" and therefore the

mark comprised more than one mark.

Id.

at 1588, 1590.

In

Primo Water,

the Board affirmed

a refusal of registration of a mark comprising the "placement and orientation of

identical spaced indicia" on either side of the handle of a water bottle in inverted

orientation, where the description of the mark indicated that the "indicia" can be

"text, graphics or a combination of both."

Primo Water

, 87 USPQ2d

at 1377. The Board noted that the varying indicia must be viewed by consumers before

they can perceive the repetition and inversion elements of the mark, and that marks

with changeable or "phantom" elements do not provide proper notice to other

trademark users.

Id.

at 1379-80. The Board also noted that the

only issue on appeal was whether applicant seeks to register more than one mark, and

that this issue is separate from the question of whether the proposed mark is

distinctive and functions as a mark.

Id.

at 1380;

see

also

In re Upper Deck

Co.

, 59 USPQ2d 1688, 1691

(TTAB 2001) (finding hologram used on trading cards in varying shapes, sizes,

contents, and positions constitutes more than one "device" as contemplated by §45 of

the Trademark Act).

A mark with a changeable element may be registrable

if the element is limited in terms of the number of possible variations, such that

the drawing provides adequate notice as to the nature of the mark and an effective

§2(d) search is possible.

Cf.

In re Dial-A-Mattress Operating Corp.

, 240 F.3d 1341, 1347-48, 57

USPQ2d 1807, 1812-13 (Fed. Cir

"device" as contemplated by §45 of

the Trademark Act).

A mark with a changeable element may be registrable

if the element is limited in terms of the number of possible variations, such that

the drawing provides adequate notice as to the nature of the mark and an effective

§2(d) search is possible.

Cf.

In re Dial-A-Mattress Operating Corp.

, 240 F.3d 1341, 1347-48, 57

USPQ2d 1807, 1812-13 (Fed. Cir. 2001) (rejecting the argument that the mark (212)

M-A-T-T-R-E-S is an unregistrable phantom mark, because, although 212 was displayed

in dotted lines to indicate it was a changeable element, it was clear that this

element was "an area code, the possibilities of which are limited by the offerings

of the telephone companies"). For example, a "phantom mark" refusal would not be

necessary for the mark T.MARKEY TRADEMARK EXHIBITION 2***, in which the asterisks

represent elements that change to indicate different years. However, if the

changeable element’s potential significance and range of meanings is not readily

clear from the context, and thus the public would be unable to determine scope of

any resulting registration, refusal is appropriate.

See

In re Constr. Research & Tech. GmbH

, 122 USPQ2d at 1586

(affirming a "phantom mark" refusal of the marks NP - - - and SL - - -, in which "-

- -" represented up to three numeric digits, noting that the missing information in

the marks is potentially wide-ranging and subject to different interpretations

depending on the context).

See

TMEP §807.01

regarding the

requirement that an application be limited to one mark.