TMEP 1214.03: "Phantom Marks" in §1(b) Applications

October 2017 Edition of the TMEP

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1214.03    "Phantom Marks" in §1(b) Applications

In an intent-to-use application for which no allegation of use has been filed, it may be unclear whether the applicant is seeking registration of a mark with a changeable element. In that case, the examining attorney should advise the applicant that, if the specimen filed with an amendment to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c), or a statement of use under §1(d) of the Act, 15 U.S.C. §1051(d), shows that applicant is seeking registration of a mark with a changeable element, registration may be refused on the ground that the application seeks registration of more than one mark. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided before the applicant files an allegation of use, the USPTO is not precluded from refusing registration on this basis.

Otherwise, if it is clear that the applicant is seeking registration of a "phantom mark" (e.g., if the application includes a statement that "the blank line represents matter that is subject to change") that would not provide adequate constructive notice of the nature of the mark and that precludes a thorough and effective search for conflicting marks (see TMEP §1214.02), the examining attorney should issue a refusal of 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.