A mark that contains a changeable or phantom element resulting in more than one mark must be refused registration.  This is the ruling from the Trademark Trial & Appeal Board (TTAB) in the August 16, 2018 precedential opinion In re Society of Health and Physical Educators (Serial No. 87/107590). In this case the applicant sought to register the mark SHAPE XXXX (in standard characters) for printed materials directed to educational association.  In the application, the applicant included a miscellaneous statement explaining “the XXXX in the mark denotes the unabbreviated name of a state of the United States and Puerto Rico.”  And, a specimen submitted with the application displayed the mark as SHAPE MICHIGAN.  The examiner rejected the application for being a phantom mark that constitutes more than one mark (i.e., a different one for each state and Puerto Rico).

As background, a phantom trademark is one in which an integral portion of the mark is generally represented by a blank or dashed line (or generic ‘X’) acting as a placeholder for a generic term or symbol that changes, depending on the use of the mark. (See 15 USC §1051 and §1127).  The TTAB explained that when an applicant seeks to register a mark with such a variable element, they must decide whether the permutations of the variable element affect the commercial impression so as to result in more than one mark.  Essentially, if such a mark is to be registered, the possible variations of the mark must be legal equivalents.

An example was provided of the registration of a (212) M-A-T-R-E-S-S mark being the legal equivalent to 1-888-M-A-T-T-R-E-S-S. (See In re Dial-A-Mattress Operating Corp., Serial No. 76290744).  In a phantom mark in which the changeable elements are arbitrary of fanciful, it is correspondingly likely that the various permutations of the mark will result in different commercial impressions and therefore constitute different marks.  By contrast, where the changeable elements are generic or merely descriptive, it is conceivable that the permutations of the mark may constitute a single mark.  This seemed to be the case with the Dial-A-Mattress example in which the numbers 212 and 888 were merely generic area codes, thus not creating different commercial impressions.

However, the TTAB explained that the mark SHAPE XXX, where XXX is defined as the name of a state or Puerto Rico, has a large number of variations, 51 to be exact.  And, even though geographic terms are generally considered not to be inherently distinctive, they are capable of acquiring distinctiveness.  Moreover, the variable element in the mark alter the characteristics of the mark SHAPE XXXX, resulting in the commercial impression of multiple marks having more than minor variations or inconsequential modifications of the basic mark.  So, the TTAB ruled that the mark SHAPE XXXX is not one mark because the different permutations are not legal equivalents, and thus denied the applicant’s appeal.

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