On June 6, 2017 the US Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) issued a precedential opinion in In re University of Miami (Re TM Serial Number 86616382)
Under the Trademark Act, an applicant must file specimens that show the mark used in commerce. These are typically pictures of labels or a website. The drawing filed with the trademark application “must be a substantially exact representation of the mark as used or in connection with the goods or services.” Trademark Rule 2.51 (a).
The decision relied upon settled law that holds that a drawing displaying only a “minor alteration” of the mark that “does not create a new and different mark creating a different commercial impression” from the matter shown in the specimens is acceptable. In re Schechter Bros. Modular Corp., 182 USPQ 694, 695 (TTAB 1974).
The Applicant in this case was the University of Miami. The drawing in Applicant’s registration was as follows:
Applicant filed the following specimens:
The TTAB framed the question as whether the mark as shown in the drawings is a substantially exact representation of the mark shown in the specimens, this is, if they “are basically the same marks creating the same impressions.” Schechter, 182 USPQ at 695.
The TTAB relied upon cases involving “mutilation”, which involves omitting the essential elements of a mark. An applicant is free to register any portion of a composite mark but if the portion of the mark sought to be registered does not create a separate and distinct commercial impression, the result is an impermissible mutilation of the mark as used. In re 1175856 Ontario Ltd., 81 USPQ2d at 1448.
Several examples were cited by the TTAB including:
In re Frankish, 113 USPQ2d at 1974 (holding design configuration of monster truck registrable separately from wording JURASSIC ATTACK on vehicle)
In re Sterno, Inc., 137 USPQ 328 (TTAB 1963) (finding subject matter of application to register:
creates a commercial impression separate and apart from applicant’s word mark STERNO and other matter appearing on label in specimen:
Based primarily on those precedents and similar precedents, the TTAB found that its drawing creates a separate and distinct commercial impression from the wording “U” and “Miami” appearing in the specimens. In the TTAB’s judgment the overall display on the specimens creates the commercial impression of a personified ibis and as with the wording in In re Frankish, the design “predominates over the words” which are “minor alterations,” separable from the design portion of the mark. Id., 113 USPQ2d at 1974.
The TTAB considered the stripes in the sweater to be a minor alteration that does not create a different mark with a different commercial impression.
The examining attorney also refused the application on the grounds that it was attempting to register more than one mark, that is, a mark with phantom elements. A phantom mark is “one in which an integral portion of the mark is generally represented by a blank or dashed line acting as a placeholder for a generic term or symbol that changes, depending on the use of the mark.” In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1514 n.1 (Fed. Cir. 1999).
Examples of phantom marks includes a date, a model number, or a telephone prefix or area code that is subject to change.
The TTAB held that applicant had not sought to register a phantom mark because neither the drawing nor the mark description (“The mark consists of an ibis wearing a hat and a sweater.”) identifies a changeable or missing element in Applicant’s mark. The TTAB also considered it important that Applicant claims no rights to any wording in either the drawing or the mark description.
The TTAB then reversed the trademark examining attorney on both grounds and held that applicant had not attempted to register multiple marks and its specimens were sufficient to show use of its mark in commerce.