1214.01 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 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. 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 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. 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.