T.M.E.P. § 1214.01
Single Application May Seek Registration of Only One Mark
Executive summary:
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1214.01 Single Application May Seek Registration of Only One Mark
Where an applicant seeks registration of a mark with a changeable or "phantom" element, the examining attorney should 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 International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres Inc., 56 USPQ2d 1538 (TTAB 2000).
In International Flavors, the applicant filed three applications to register the designations "LIVING xxxx," "LIVING xxxx FLAVOR," and "LIVING xxxx FLAVORS," for essential oils, flavor substances, and fragrances. Each application included a statement that "[t]he meaning of 'xxxx' is for a specific herb, fruit, plant or vegetable." 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. 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. International Flavors, 51 USPQ2d at 1517-18. Cf. In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001) (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).
See also TMEP §807.01 regarding the requirement that an application be limited to one mark.