Phantom Marks – Registering Trademarks with Variable Elements

By Doni Robinson

A phantom mark is a mark which contains a variable element that changes depending on the use of the mark.  Phantom marks may contain a date, a geographic location or a model number. Generally speaking, a phantom mark is not a registrable mark because phantom marks do not function as one trademark.

A trademark application must be reflective of how you intend to use the mark or are actually using the mark. It follows then that an applicant can only seek to register a single mark. The reason behind this rule is that your trademark registration serves to provide notice to potential users of the same or similar mark. If your mark contains variable elements, the mark would arguably not provide proper notice to other trademark users.

TTAB has taken the position that whether an application containing a changeable element will be registrable depends on whether the various possibilities represent a single mark. If the variations represent more than one mark, the mark is a phantom mark and is not registrable. In a recent precedential decision, TTAB affirmed the refusal of the mark SHAPE XXXX, finding the mark to be a phantom mark that comprises more than one mark. In re Society of Health and Physical Educators, Serial No. 87107590 (August 16, 2018) [precedential].  The variable element XXXX denoted an unabbreviated name of a state. Accordingly, the mark was capable of 51 variations. In its decision, TTAB considered whether the permutations of the variable element affect the commercial impression so as to result in more than one mark. For example, is SHAPE MICHIGAN the same mark as SHAPE OHIO? TTAB ruled that the variations are not the same, and the 51 variations would not result in legally equivalent marks.

In order to put potential users of the same or a confusingly similar mark on notice, your registration must consist of only one mark. How you use your mark in commerce should be accurately reflected in your trademark application. If you file for a trademark, but actually use that mark with changeable elements, your phantom mark might not be protectable. Talk to an attorney at Jayaram Law if you are considering submitting applications for marks which may contain changeable elements.