In his battle for justice, comic-book crime-fighter The Phantom relies on strength, intelligence, and reputed immortality to defeat his foes. He wears a ring featuring four overlapping sabres forming a cross and known as "The Good Mark."

Those touched by the Good Mark are under The Phantom's protection, and the mark gives the wearer amazing luck.

Too bad trademark applicant Perception Options couldn’t touch the mark before its hearing at the Trademark Trial and Appeal Board (TTAB) earlier this year. In In re Perception Options LLC, Serial No. 861044779 (May 11, 2016), the TTAB refused to register the below mark for "financial analysis and consultation":

Perception Options stated in its application that its applied-for mark comprises the term 'XXX.XX' forming a pattern of overlapping circles, with the design consisting of a distinctive arrangement of numerical financial data and each 'X' in the design representing a single-digit integer: 0, 1, 2, 3, 4, 5, 6, 7, 8, or 9.

However, the Board deemed the mark a so-called “phantom” mark—that is, one with a changeable element. It noted that a trademark application may seek to register and must be limited to a single mark, but a mark that contains a phantom element is considered to comprise more than one mark and, as such, does not provide proper notice to other trademark users.

According to the USPTO’s Trademark Manual of Examining Procedure (TMEP):

If an intent-to-use application indicates that the applicant is seeking registration of a “phantom mark” (e.g., if the application includes a statement that “the blank line represents a date that is subject to change”), the examining attorney must 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.

It should be noted, however, that not all phantom marks are unregistrable; a mark may be registrable if the changeable element involves a limited number of possible variations.

For example, in In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001), the Federal Circuit held that the registered mark (212) M-A-T-T-R-E-S (where the 212 area code was depicted in dotted lines and thus variable) could be used to demonstrate secondary meaning for the subject application to register 1-888-M-A-T-T-R-E-S, and that the registered mark remained valid despite its ghostly area-code element, because the possible permutations of this element were limited.

In a later decision in a Dial-A-Mattress case, In re Dial-A-Mattress Operating Corp., No. 76290744 (June 15, 2004), the TTAB noted that “it is clear that not all phantom marks are prohibited, per se, from registration.”

Despite this apparent evolution of the Federal Circuit’s stance, however, the USPTO has remained strict, and the TMEP itself maintains a blanket prohibition on phantom marks.

In the case of Perception Options, the examining attorney argued that the applicant sought to register more than one mark because the 'X' in its drawing referred to a changing single-digit integer. As such, and perhaps to distinguish from the decision in Dial-A-Mattress, the examiner emphasized that the possible combinations in this case were essentially limitless.

Perception Options argued in response that the coordinates of the changeable integer element created the oval design, and as such the visual pattern within the oval remained fixed regardless of the internal integers. The company tried to compare the integers to pixels, as used according to the principles of micrography or text art.

Thus, Perception Options argued, it sought registration for a single mark for which the overall commercial impression was a fixed oval design, regardless of the varying integer make-up.

The Board was not persuaded. It felt that the commercial impression of the proposed mark would change depending on the numbers or combination of numbers used, the colors, the font style (normal, italic, or bold), or the font type. It held that even if fonts or colors were not mixed, the use of certain integer-strings in the same font could create prominent and recessive sections within the oval so as to create a design, and the design might not be perceived as simply a fixed oval or interlocking ovals as stated in Perception Options’ description.

The Board concluded that the ability to change the integer-strings within the oval and to change fonts and color resulted in more than one mark. Thus, adequate notice to the public would not be provided, and the public's ability to conduct a thorough search would not be possible. It affirmed the examiner’s refusal to register.

We don’t live in a comic-book world, of course, and the TTAB does not have magical powers in determining what a good mark is. But this case highlights what appears as a logical inconsistency in the Board’s previous jurisprudence on phantom marks.

Had the Board slammed the door shut on registering any such mark with a changeable element, as the TMEP seems to, then its own ruling (and the examiner’s job) would be simpler. If Perception Option’s mark specified the font and color of the integers, it seems it might have been registrable.

But this latter condition begs the question of why font and color would matter, since a standard character mark can be displayed in different fonts and colors, and a design mark without a color claim can be displayed in any color.

The Board’s decision is non-precedential. Not wholly unlike the Good Mark, a phantom mark offers a potentially quite broad scope of protection, so future applicants should thoroughly consider how to successfully obtain them. This being the real world, though, they won’t have a superhero to turn to for help.

Reprinted with permission from the October 28, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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