Examination Guide NO. 1-99

UNITED STATES DEPARTMENT OF COMMERCE

Patent and Trademark Office

OFFICE OF ASSISTANT COMMISSIONER FOR TRADEMARKS

2900 Crystal Drive

Arlington, Virginia 22202-3513

EXAMINATION GUIDE NO. 1-99

September 29, 1999

I. "Phantom" Elements in Marks

The Office continues to receive applications in which the applicant seeks registration of a "phantom" element as part of a mark, i.e., a word, alpha-numeric designation, or other component that is subject to change. The applicant represents the changeable or "phantom" element by inserting a blank, or by using dots, dashes, underlining, or a designation such as "XXXX."

Examples include marks incorporating a date (usually a year), a geographic location, or a model number that is subject to change. While these are some of the most common examples of the types of elements involved, there are many variations.

A. Single Application May Seek Registration of Only One Mark

The Court of Appeals for the Federal Circuit recently held that an application with a "phantom" element in the mark was unregistrable because it included more than one mark in a single application. In re International Flavors & Fragrances Inc., ___ F.3d ___, 51 USPQ2d 1513 (Fed. Cir. 1999). The applicant filed three applications to register the designations "LIVING xxxx," "LIVING xxxx FLAVOR," and "LIVING xxxx FLAVORS," for essential oils, flavor substances, and fragrances. Each application included a statement that "[t]he meaning of 'xxxx' is for a specific herb, fruit, plant or vegetable...."

In upholding the refusal of registration, the court noted that under Trademark Act §22, 15 U.S.C. §1072, registration serves as constructive notice to the public of the registrant's ownership of the mark and thus precludes another user from claiming innocent misappropriation as a trademark infringement defense. In order to make this constructive notice meaningful, the mark as registered must accurately reflect the mark that is used in commerce, so that someone who searches the register for a similar mark will locate the registration. The court stated that "phantom marks" with missing elements encompass too many combinations and permutations to make a thorough and effective search possible and, therefore, the registration of these marks does not provide adequate notice to competitors and the public. Id at 1517-18.

The Office will not register "phantom marks." Where an applicant seeks registration of a mark with a changeable or "phantom" element, the examining attorney should refuse registration under Trademark Act §§1 and 45, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark. The examining attorney may use the following form paragraph:

B. Agreement of Mark on Drawing With Mark on Specimens or Foreign Registration

Where an applicant seeks registration of a "phantom mark," the examining attorney should also consider whether the mark on the drawing is a substantially exact representation of the mark as used on the specimens in a use-based application, or the mark in the home country registration in an application based on Trademark Act §44, 15 U.S.C. §1126. See TMEP §§807.14 and 807.14(b).

The applicant may amend the mark to overcome a refusal on the ground that the mark on the drawing does not agree with the mark as used on the specimens, or with the mark in the foreign registration, provided that the amendment is not a material alteration of the mark. See TMEP §807.14(a) regarding material alteration. Amendment may be permissible when the phantom material is generic.

C. "Phantom Marks" in Intent-to-Use Applications

In an intent-to-use application for which no allegation of use has been filed, it may be unclear whether the applicant is seeking registration of a mark with a changeable element. 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 should issue a refusal of registration under Trademark Act §§1 and 45, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark, as discussed above. If it is unclear whether the applicant is seeking registration of a "phantom" mark, the examining attorney should issue an advisory statement that if the specimens filed with an amendment to allege use under Trademark Act §1(c), 15 U.S.C. §1051(c), or a statement of use under Trademark Act §1(d), 15 U.S.C. §1051(d), show that the applicant is seeking registration of a mark with a changeable element, registration will be refused on the ground that the application seeks registration of more than a single mark. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant prior to filing of the allegation of use, the Office is not precluded from refusing registration on this basis.

II. Functionality - New Statutory Refusal

The Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3069, amended the Trademark Act to expressly prohibit registration on either the Principal or Supplemental Register of matter that is de jure functional. The following amendments codify case law and the longstanding Office practice of refusing registration of matter that is de jure functional:

• A new §2(e)(5) adds "matter that, as a whole, is functional" to the list of statutory refusals in §2(e) of the Trademark Act, 15 U.S.C. §1052(e).
• Section 2(f) of the Act, 15 U.S.C. §1052(f), now provides that matter that, as a whole, is functional may not be registered even upon a showing that it has become distinctive.
• Section 23(c) of the Act, 15 U.S.C. §1091(c), now provides that a mark that, as a whole, is functional may not be registered on the Supplemental Register.
• Section 14(3) of the Act, 15 U.S.C. §1064(3), now lists functionality as a ground that can be raised in a cancellation proceeding more than five years after the date of registration.
• Section 33(b) of the Act, 15 U.S.C. §1115(b), now lists functionality as a statutory defense to infringement in a suit involving an incontestable registration.

A configuration that is "functional as a whole" is de jure functional. The amendments to the Act merely provide a new statutory basis for refusal. See TMEP §§1202.03(a)(i)(C), 1202.03(f)(i), and 1202.03(f)(ii) and cases cited therein regarding de jure functionality.

The statutory changes apply only to applications filed on or after October 30, 1998. When refusing registration of an application whose effective filing date is on or after October 30, 1998, on the ground that the proposed mark is de jure functional, examining attorneys should cite Section 2(e)(5) as the basis for refusal of registration on the Principal Register, or Section 23(c) as the basis for refusal of registration on the Supplemental Register.

III. Goods in Trade

Before rights in a term as a mark can be established, the subject matter to which the term is applied must be "goods in trade." Incidental items that an applicant uses in conducting its business (such as letterhead, invoices and business forms), as opposed to items sold or transported in commerce for use by others, are not "goods in trade." See In re Shareholders Data Corp ., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (reports not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972) (reports and printouts not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service); In re Douglas Aircraft Co., Inc., 123 USPQ 271 (TTAB 1959) (Books, pamphlets and brochures which serve only to explain and advertise the goods in which applicant deals are not "goods"); Ex parte Bank of America National Trust and Savings Association , 118 USPQ 165 (Comm'r Pats. 1958) (mark not registrable for passbooks, checks and other printed forms, where forms are used only as necessary tools in the performance of banking services, and the applicant is not engaged in printing or selling forms as commodities in trade); Ex Parte Kansas City Southern Railway Co. , 11 USPQ 67 (Comm'r Pats. 1931), reh'g denied 11 USPQ 3 (Comm'r Pats. 1931) (railroad timetable not vendible commodity or marketable product, but is merely incidental to transportation service).

Affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on "goods." While a formal sale is not always necessary, items sold or transported in commerce are not "goods in trade" unless they have utility to others as the type of product named in the application.

See: Gay Toys, Inc. v. McDonald's Corp ., 585 F.2d 1067, 199 USPQ 722 (C.C.P.A. 1978) (plaster mockup of toy truck not goods in trade, where there is no evidence the mockup is actually used as toy); Paramount Pictures Corp. v. White , 31 USPQ2d 1768 (TTAB 1994), aff'd without comment on this issue 108 F.3d 1392 (Fed. Cir. 1997) (mark not registrable for games, where purported games are advertising flyers used to promote applicant's services and have no real utilitarian function or purpose as games); In re Snap-On Tools Corp ., 159 USPQ 254 (TTAB 1968) (ball point pens used to promote applicant's tools are goods in trade, where they have a utilitarian function and purpose, and have been sold to applicant's franchised dealers and transported in commerce under mark); In re United Merchants & Manufacturers, Inc. , 154 USPQ 625 (TTAB 1967) (calendar used to promote applicant's plastic film constitutes goods in trade, where calendar has utilitarian function and purpose in and of itself, and has been regularly distributed in commerce for several years).

A. Registration Must Be Refused if Mark Not Used on Goods in Trade

If the specimens, identification of goods, or other evidence in the record indicate that the applicant uses the mark only on items incidental to conducting its own business, as opposed to items intended to be used by others, the examining attorney should refuse registration on the Principal Register under §§1, 2 and 45 of the Trademark Act; 15 U.S.C. §§1051, 1052 and 1127, on the ground that the mark is not used on "goods in trade."

If a mark is not used on "goods in trade," it is not registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), or on the Supplemental Register.

If some, but not all of the items listed in the identification of goods are found not to be "goods in trade," it is not necessary to refuse registration of the entire application, but the examining attorney should require that these items be deleted from the identification of goods.

B. "Goods in Trade" in Intent-to-Use Applications

Since the question of whether a mark is used on goods in trade is based on the manner in which the mark is used, the issue ordinarily does not arise in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until after the filing of an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d). However, if the identification of goods in an intent-to-use application includes items that appear not to be goods in trade, the potential refusal should be brought to the applicant's attention in the first action issued by the Office, if appropriate. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant prior to filing of the allegation of use, the Office is not precluded from refusing registration on this basis.

C. "Goods in Trade" in Applications Based on Section 44

If the application is based solely on §44 of the Trademark Act, 15 U.S.C. §1126, the issue of whether the mark is used on goods in trade does not arise, since use is not required for a §44 application. However, if the application is based on both §44 and either §1(a) or §1(b), the examining attorney should refuse registration if the record indicates that the mark is not used on "goods in trade."

IV. Registrability of Marks That Identify Columns or Sections of Publications

A. Marks That Identify Columns or Sections of Printed Publications

A column, section or supplement of a printed publication is normally not considered to be separate "goods" or "goods in trade" unless it is sold, syndicated, or offered for syndication separate and apart from the larger publication in which it appears. In re Broadcasting Publications, Inc. , 135 USPQ 374 (TTAB 1962); Ex parte Meredith Publishing Co., 109 USPQ 426 (Comm'r Pats. 1956). This is true even of a removable or separable "pullout" section of a newspaper or other publication. In Meredith , the issue was analyzed as follows:

 

109 USPQ 426.

1. Syndicated Columns and Sections

Columns or sections which are separately sold, syndicated, or offered for syndication do constitute goods in trade. A mark that identifies a column or section that is separately syndicated or offered for syndication is registrable on the Principal Register without resort to §2(f) of the Trademark Act, 15 U.S.C. §1052(f), as long as registration is not barred by other sections of the Act.

2. Non-Syndicated Columns and Sections

A column or section of a printed publication that is not separately sold, syndicated, or offered for syndication is not, in and of itself, considered to be separate goods in trade. Therefore, where the specimens, identification of goods, or other evidence in the record indicates that the mark identifies a column or section of a printed publication that is not separately sold, syndicated, or offered for syndication, the examining attorney should refuse registration on the Principal Register under §§1, 2 and 45 of the Trademark Act; 15 U.S.C. §§1051, 1052 and 1127, on the ground that the mark is not used on separate goods in trade.

Marks that identify non-syndicated columns or sections of printed publications are registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), if the column or section is shown to have acquired separate recognition and distinctiveness. The applicant who seeks registration on the Principal Register bears the burden of establishing, through evidence of promotion, long use, advertising expenditures, and breadth of distribution or sales figures, that the public has come to recognize the proposed mark as an indicator of source.

The evidence of acquired distinctiveness must show that the column or section title is used and promoted to distinguish applicant's column or section from the columns or sections of other publishers' publications rather than merely to distinguish applicant's column or section from other columns or sections of applicant's publication. Metro Publishing v. San Jose Mercury News , 987 F.2d 637, 25 USPQ2d 2049 (9th Cir. 1993); In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962).

The amount of evidence needed to establish distinctiveness must be evaluated by the examining attorney on a case-by-case basis, in light of the type of column or supplement. If the mark identifies a removable or pull-out section, a lesser degree of evidence might be required to establish distinctiveness. Of course, the amount of evidence needed to establish distinctiveness in any particular case will also vary depending on the strength or weakness of the mark. TMEP §1212.04(a).

Marks that identify non-syndicated columns or sections of printed publications, but which have not yet acquired distinctiveness and thus are not registrable under §2(f) of the Act, are registrable on the Supplemental Register, as long as registration is not barred by other sections of the Act. In re Meredith Publishing Co., 123 USPQ 557 (TTAB 1959).

3. Marks That Identify Columns and Sections of Printed Publications in Intent-to-Use Applications

Since a refusal of registration of a mark that identifies a column or section of a printed publication is based upon whether the column or section is separately sold or syndicated, the issue ordinarily does not arise in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has filed an either an amendment to allege use under §1(c), or a statement of use under §1(d), 15 U.S.C. §§1051(c) and (d). However, if the identification of goods indicates that the mark is intended to be used to identify a column or section of a printed publication that is not separately sold or syndicated, the potential refusal on the ground that the proposed mark is not used on separate goods in trade should be brought to the applicant's attention in the first Office Action, if appropriate. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant prior to the filing of the allegation of use, the Office is not precluded from refusing registration on this basis.

4. Marks That Identify Columns and Sections of Printed Publications in Applications Based on Section 44

If the application is based solely on §44 of the Trademark Act, 15 U.S.C. §1126, the issue of whether the mark is used on goods in trade does not arise, since use is not required for a §44 application. However, if the application is based on both §44 and either §1(a) or §1(b), the examining attorney should refuse registration if the record indicates that the mark identifies a column or section of a printed publication that is not or will not be separately sold, syndicated, or offered for syndication.

B. Marks That Identify Columns and Sections of On-Line Publications

An on-line publication is considered a service rather than a product. Therefore, refusal of registration on the ground that the proposed mark is not used on goods in trade is inappropriate. Unlike a printed column or section, an on-line column or section can be accessed directly and can exist independent of any single publication. See Ludden v. Metro Weekly and Isosceles Publishing, Inc. , 8 F. Supp.2d 7, 47 USPQ2d 1087 (D.D.C. 1998). Therefore, a mark that identifies an on-line column is registrable on the Principal Register without resort to §2(f) of the Trademark Act, 15 U.S.C. §1052(f), as long as registration is not barred by other sections of the Act.

V. Identification and Classification of On-Line Publications

An on-line publication should be identified as "computer services, namely, providing an on-line [indicate type of publication] in the field of [indicate subject matter of publication]," in Class 42. A column or section of an on-line publication would be identified as "computer services, namely, providing a [column or section] in an on-line [indicate type of publication] in the field of [indicate subject matter of publication]," in Class 42.

If an applicant identifies its goods as "publications, namely ...," and it becomes apparent during examination that the goods are in fact on-line publications, the applicant may amend the identification to indicate that the goods are on-line publications in Class 42, since the term "publications" is broad enough to encompass both printed and on-line publications. If such an amendment is entered after publication, the mark must be republished, due to the change in classification.

On the other hand, if the applicant identifies its goods as "printed publications...," the identification cannot be amended to indicate that the goods are "on-line publications," because this would exceed the scope of the original identification. 37 C.F.R. §2.71(b).

VI. Minor as Applicant

The question of whether an application can be filed in the name of a minor depends on state law. If the person can validly enter into binding legal obligations in the state in which he or she is domiciled, then the application may be filed in the name of the minor. Otherwise, the application should be filed in the name of a parent or legal guardian, clearly setting forth their status as a parent or legal guardian. If the record indicates that an application has been filed in the name of a minor, the examining attorney should inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled, and require correction of the entity statement, if necessary.

VII. Trademark Law Treaty Implementation Act

The Trademark Law Treaty Implementation Act, Pub. Law 105-330, 112 Stat. 3069, was enacted October 30, 1998. Title I of the Act is not effective until one year after the date of enactment. Titles II and III became effective on the date of enactment.

Title I - Effective October 30, 1999

Title I, which includes the statutory changes that implement the treaty, will take effect on October 30, 1999. Highlights of the changes are:

• The requirement in §§1(a) and 1(b) of the Act that an application filed by a juristic applicant be verified by "a member of the firm or an officer of the corporation or association" is eliminated. The Commissioner may determine the appropriate person with authority to sign a verified statement for a juristic applicant.
• The requirement in §§1(a) and 1(b) of the Act for the applicant to state the mode or manner in which the mark is used or intended to be used on or in connection with the goods (the "method of use clause") is eliminated.
• The Commissioner is given authority in §§1(a)(4) and 1(b)(4) of the Act to establish filing date requirements.
• The requirement that an application based on §44(e) of the Act be accompanied by a certificate or certified copy of the foreign registration at the time of filing is eliminated; the Commissioner is permitted to prescribe the time period for filing the certificate or certified copy.
• The standard under §12(b) of the Act for reviving an application abandoned due to untimely response to an Office Action is changed from a showing of unavoidable delay to a showing of unintentional delay.
• Section 1(d)(4) of the Act is amended to add that an application abandoned for failure to timely file a statement of use or an extension request for filing a statement of use can be revived with a showing of unintentional delay, as long as the period for filing the statement of use is not extended beyond the maximum statutory period of 36 months.
• A declaration and showing of continued use or excusable nonuse will no longer be required as part of a renewal application. However, §8 of the Act has been amended to require that a registrant file an affidavit of use or excusable nonuse in the year preceding the tenth anniversary of the registration, and every ten years thereafter. Thus, every tenth year, a registrant will have to file both a renewal application and a §8 affidavit. The substance of the combined filing will be same as the current requirements for renewal. The Office will provide combined §8 and 9 forms to make it easier for registrants to make both filings at the same time.
• A §8 affidavit will still be required between the fifth and sixth year after the date of registration.
• Both §8 affidavits and renewal applications will have a six-month grace period for late filing with payment of a "grace period fee," and a provision for curing deficiencies after expiration of the statutory filing period, with payment of a "deficiency fee."

Further information about the Trademark Law Treaty Implementation Act changes will be provided in a future examination guide.

Title II - Effective October 30, 1998

Title II, the Technical Corrections to Trademark Act of 1946, codifies caselaw and the longstanding Office practice of refusing registration of matter that is de jure functional. See  Section II of this examination guide for further information.

 

Title III - Effective October 30, 1998

Title III, Sec. 301 amends §14 of the Trademark Act, 15 U.S.C. §1064, to state that §14(5), which provides for cancellation of a registered certification mark if the registrant permits the use of the mark for purposes other than to certify, does not prohibit the registrant from using its certification mark for advertising or promotional purposes; and that use for advertising or promotional purposes is not grounds for cancellation unless the registrant itself produces, manufactures, or sells any of the certified goods or services.

Title III, Sec. 302 requires that the Commissioner study and issue a report on the issues surrounding the protection of the official insignia of federally and State-recognized Native American Indian tribes. This section does not amend the Trademark Act.

VIII. Trademark Amendments Act of 1999

The Trademark Amendments Act of 1999, Pub. Law 106-43, 113 Stat. 218, was enacted on August 5, 1999. The new law permits dilution as a ground for opposition or cancellation in a proceeding at the TTAB. The new law has no effect on the examination process. Examining attorneys should not issue a refusal of registration under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that the mark sought to be registered dilutes a registered mark.

IX. Electronic Filing

Under TEAS (Trademark Electronic Application System), there are two ways to prepare an application: The applicant may use (1) e-TEAS to submit an application directly over the Internet; or (2) PrinTEAS to complete an application on-line, for printing and mailing. When the application is submitted by e-TEAS, the application is printed upon receipt in the Office. Both PrinTEAS and e-TEAS application forms look different than a "traditional" application, because each data element of the application is "tagged" to assist in identifying and capturing the data in TRAM. However, e-TEAS and PrinTEAS applications include all the information required for examination. There are some special issues that arise in examination of electronically-transmitted applications.

A. Signature of Electronically-Transmitted Applications

In an e-TEAS application, the applicant does not apply a conventional signature. Instead, the applicant affixes a "symbol" that the applicant has adopted as a signature. The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature, as long as it is placed between two forward slash ("/") symbols. Examples of acceptable signatures for e-TEAS applications include / john doe /; / drl /; and / 544-4925 /. When examining an e-TEAS application, the examining attorney should not ask the applicant to verify that the symbol is the applicant's signature, and should not require the applicant to submit a new declaration with a pen-and-ink signature.

PrinTEAS applications (those printed out and mailed to the Office) must be signed in the conventional manner, i.e., pen and ink.

B. Specimens/Special-Form Drawings

To file electronically an application that is based on use and/or includes a stylized mark or design, the applicant must attach a specially-formatted image file to the application, so that the Office may create a special form drawing page and/or generate copies of the specimen(s).

Sometimes there is a technical problem in printing the specimen, so that there is no specimen in the file. In this situation, the examining attorney should ask the applicant to submit by mail, the specimen, or a facsimile of the specimen, attached to the original electronically-filed application, along with a statement by the person who transmitted the application to the Office, declaring that the specimen being submitted by mail is a true copy of the specimen submitted with the electronically-filed application. Cf.  TMEP §714.

C. Payment

An applicant who files electronically using e-TEAS can pay by either using a credit card or charging a deposit account. Credit card information should not appear in the application file.

The Office does not accept credit card payments for PrinTEAS applications, for adding classes to an e-TEAS application, or for any other filings.