14
Apr/03

A Candidate for a Top Ten Phantom Mark of 2003


The Trademark Project, a new blog, became aware of a pending application for the mark TOP TEN TTAB DECISIONS OF 20** filed by a trademark lawyer, for articles about decisions of the Trademark Trial and Appeal Board.  The blogger notes that the mark seems descriptive, and also, it appears to be an unregistrable phantom mark.  It asks “Someone please explain this one.”

Without commenting on this particular application, Trademark Project’s query seems to concern what are known as phantom marks.  When someone uses a series of marks that are mostly similar but might differ only through a single term such as a date, or flavor, or topic, there is an economic motivation to file a single trademark application and leave one element blank (the Phantom element).  IDG, for example, owns a 1995 registration for “_____ FOR DUMMIES.”

However, a Federal Circuit case in 1999, In re International Flavors & Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999), suggests that such registrations are not enforceable.  Furthermore, PTO Examination Guide No 1-99 says that the PTO will reject such applications, on the grounds that phatom marks violate the one mark per registration rule.  See the Examination Guide for work-arounds.  I note that IDG owns an additional registration for the term FOR DUMMIES.

Information on King Feature’s Phantom character here

 

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