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On June 6, in a precedential decision in In re University of Miami, Serial No. 8661638, the Trademark Trial and Appeal Board reversed two U.S. Patent and Trademark Office (USPTO) refusals to register a design mark depicting the mascot of the University of Miami Hurricanes—Sebastian the Ibis—for various paper products, clothing, and educational and entertainment services.

Bravery and leadership are admirable traits for college athletes, and that is likely why the University of Miami chose an ibis as its mascot. A marsh bird found in the Florida Everglades, the ibis instinctively signals to other members of the bird kingdom when a storm is imminent.

Sharp instincts likely helped the university in its appeal. The Lanham Act requires that a trademark applicant submit a specimen of its mark as used, and a drawing that is a "substantially exact representation of the mark" as used. If the mark in the drawing contains only a minor alteration of the mark as used—i.e., if it does not create a different commercial impression than the mark as used—the USPTO will accept it.

That seems straightforward, but is it?

The mark in the drawing differed from the specimen of the mark as used. The latter showed the stylized letter "U" in the center of Sebastian's hat, the word "Miami" on the front of his sweater, and striping along the sweater's side and shoulders.

In issuing the refusals, the USPTO's examining attorney argued that the University of Miami had mutilated its mark by "severing part of it and seeking registration of only that part." The question for the board was: "What exactly is the 'trademark,' and does the designation for which registration is sought comprise a separate and distinct 'trademark' in and of itself?"

The board explained that an applicant is allowed some latitude in selecting the mark it wants to register, provided that the portion it selects creates a separate and distinct commercial impression. If it does not, the result is an impermissible mutilation of the mark. It referenced several of its prior decisions as examples of a design or word being registrable separate from accompanying matter. One example was the successful registration of a monster truck design, even though its specimen of use showed the words Jurassic Attack on the side of the truck.

The board held that the university's applied-for mark created a separate and distinct commercial impression of a personified ibis, despite the appearance of the letter "U" and the word "Miami" on the specimen of use. It found the absence of stripes on Sebastian's sweater to be a minor alteration that did not serve to create a different mark with a different commercial impression from that of the specimen. The board therefore held that the university's drawing was not a mutilation of the mark as actually used, but a substantially exact representation of it, and reversed the examiner's first refusal to register.

Next, the board turned to the examining attorney's argument that the university was attempting to register more than one mark because Sebastian's sweater was operating as a blank slate for whatever additional elements the university, at its sole discretion, might want to include.

This argument invokes the issue of phantom marks, a topic I addressed in an article published recently in this space, and in a piece I wrote last year. Under the Lanham Act, a trademark application may seek to register only a single mark. Registration of marks with changeable or phantom elements is generally prohibited because they constitute more than one mark. They do not disclose the designation used to identify and distinguish the goods covered by the mark, making it impossible for a future third party to conduct an effective trademark search.

In the case of Sebastian the Ibis, the board held that neither the drawing nor the mark description improperly identified a changeable or missing element. The examiner's second refusal had arisen because of the extra elements that appeared on the specimen of use, but the board held that those elements were not integral to the mark.

In other words, the university did not claim rights to any wording in either the drawing or the mark description: the applied-for mark did not incorporate any wording whatsoever. A registration of the ibis design would cover only that mark as shown on the drawing, not any house marks or other literal elements the university might choose to add to it. Thus, the board held that the university had not applied to register multiple marks and reversed the phantom mark refusal.

The board's holding suggests that one way to avoid a refusal to register a mark because it is a phantom mark is to not claim a phantom element as part of the mark. To further strengthen the argument, an applicant might set off the non-phantom element in such a way that it creates a separate commercial impression, for example, by color, font or design.

But the board's decision is open to criticism, I believe, for its holding is not consistent with past precedent. Even though the words on Sebastian's hat and sweater were not considered part of the mark, I think it fair to argue the stripes on the sweater should be. That said, the examining attorney's argument about phantom marks was ultimately self-defeating. The sweater operates as a blank slate for whatever additional elements the university might see fit to include. The board found the mark registrable regardless of what is depicted on the sweater. That is why it is considered a separate mark and not a phantom mark.

So clear skies ahead for the Hurricanes' fearless Sebastian the Ibis—at least in matters involving its mascot's trademark registration.

Reprinted with permission from the September 5, 2017 edition of Daily Business Review© 2017 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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