MPT, Inc.

Trademark Trial and Appeal Board

Aug 9, 2017

No. 86316207 (T.T.A.B. Aug. 9, 2017)

This Opinion Is Not a
Precedent of the TTAB

Mailed: August 9, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MPT, Inc.
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Serial No. 86316207
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Donna M. Klett of Pearne & Gordon LLP
for MPT, Inc.

Ryan Lavoie, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
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Before Greenbaum, Adlin, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background

MPT, Inc. (“Applicant”) seeks registration on the Supplemental Register of the
configuration mark shown below for “Printed paper labels; paper identification tags;
printed paper labels; adhesive labels; paper die cut shapes; paper labels; paper tags;
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placards of paper or cardboard; printed paper labels; coupons” in International Class
16 and “Plastic labels” in International Class 20:

The current description of the mark is:
The mark consists of the configuration of a label, placard, coupon,
or tag for marketing or disseminating commercial messages to
consumers or the general public, said configuration consisting of the
four rounded, convex corners and the call-out indicator of a
generally rectangular speech bubble, with the call-out indicator
located at the bottom of the speech bubble and formed by an
extended pointed portion connected to the lower right corner by a
concave line and connected to the lower left corner by a sloped line.
The broken lines in the drawing are used to show the placement of
the mark and are not part of the mark.1

Applicant’s original description stated that the dotted lines serve “to indicate that the
height and width dimensions of the product are not claimed as a feature of the mark.”
June 20, 2014 Application. In its June 1, 2015 Response to Office Action, Applicant
explained the broken lines as follows: “These unclaimed portions comprise portions
of the straight walls at the four sides of the label that would fix their length.”

1 Application Serial No. 86316207 was filed June 20, 2014, based on intent to use in commerce
under Section 1(b), 15 U.S.C. § 1051(b). Applicant subsequently filed an allegation of use and
an amendment to seek registration on the Supplemental Register, in order to overcome a
nondistinctiveness refusal.
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The Examining Attorney refused registration on three related grounds:2
1. The application seeks registration of more than one
mark, in that the portion of the mark appearing in
dotted lines represents a changeable or “phantom”
element in violation of Trademark Act Sections 1 and
45, 15 U.S.C. §§ 1051 and 1127;3

2. Applicant’s drawing is unacceptable pursuant to
Section 1(a)(1) of the Act, 15 U.S.C. § 1051(a); and

3. The description of the mark is unacceptable pursuant
to Trademark Rule 2.37, 37 C.F.R. § 2.37.

After the Examining Attorney made the refusals final, Applicant appealed. We affirm
the phantom mark refusal and the description and drawing requirements.
II. Phantom Mark Refusal
A “phantom” trademark “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, 1515 n.1 (Fed. Cir. 1999). Under
the Trademark Act, however, “a trademark application may only seek to register a
single mark.” Id. at 1516. A mark that contains a changeable or “phantom” element
is more than one mark. In re Primo Water Corp., 87 USPQ2d 1376, 1378 (TTAB 2008).
In Primo Water, the Board provided some background on phantom mark refusals:
As the Court discussed in International Flavors, a primary purpose
of registration is to provide notice to potential users of the same or

2 The Examining Attorney did not refuse registration on the Supplemental Register on the
ground that the proposed mark is incapable of distinguishing Applicant’s goods under §§23(c)
and 45 of the Trademark Act, 15 U.S.C. §§1091(c), 1127.
3 See also 15 U.S.C. § 1091(c) regarding eligibility of “a mark” for registration on the
Supplemental Register.
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a confusingly similar mark, and that to serve this purpose, the
mark, as registered, must accurately reflect the way it is used in
commerce so that someone who searches the registers of the USPTO
for the mark, or a similar mark, will locate the registered mark. The
Court further stated, at 51 USPQ2d 1517 -18, that “phantom” marks
with missing elements “encompass too many combinations and
permutations to make a thorough and effective search possible. The
registration of such marks does not provide proper notice to other
trademark users, thus failing to help bring order to the marketplace
and defeating one of the vital purposes of federal trademark
registration.”

Id.

We find that the significantly different shapes that potentially could be created by
varying the lengths and widths of the sides of this “generally rectangular” shape
demonstrate the unacceptable phantom nature of the proposed mark. As shown below
through two hypothetical examples of manipulation of the length and width, the
resulting shapes can differ substantially. The first example is below:

The first example displays an elongated rectangular shape that is approximately
twice as long and half as wide as that shown in Applicant’s drawing.
The second example is below:
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The second example displays a rectangular shape that approximates a square.
The dotted lines also leave open the possibility that the missing elements may not
be straight lines, presenting even more, in fact unlimited, potential for variation in
the “generally rectangular” shape. As potential product designs of labels, the
variations could look dissimilar and create completely different commercial
impressions. Thus, we consider this case distinguishable from In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1813 (Fed. Cir. 2001), in which the
commercial impression of the changeable element in the mark was “an area code, the
possibilities of which are limited by the offerings of the telephone companies.” We see
more of a parallel to In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001), wherein
the Board rejected the applicant’s attempt to register a hologram device for trading
cards, without limitation of the size, shape, or content of the hologram device. The
Board found, inter alia, that the “myriad of shapes, sizes, contents and the like”
resulted in an unacceptably large number of combinations that almost certainly
would have varying commercial impressions. Id. at 1690. See also In re Hayes, 62
USPQ2d 1443, 1446 (TTAB 2002) (applicant was impermissibly seeking the
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registration of multiple marks when it sought “to register all combinations and
permutations of green, amber and red squares in a grid”).
Applicant argues that it merely seeks to register “portions of what is described as
a ‘generally rectangular speech bubble,’” such that the broken lines are not
“changeable placeholders.”4 However, as noted above, Applicant stated in its original
description and in a response that the broken lines represent the varying lengths and
widths it seeks to protect, rather than mere unclaimed but consistent portions of a
single, unchanging product configuration. While Applicant’s proposed variations all
may be talk bubbles, with three-dimensional configurations of the goods such as
these, the form and shape of them are the essence of the mark, and Applicant’s
proposed forms and shapes could diverge too much to be considered the same mark.
See id. (“We disagree with applicants’ statement that a mark should be considered as
a single mark as long as all variations fit within the characterization of the
description”). More importantly, under the circumstances, Applicant’s use of broken
lines in this drawing impermissibly opens the door to multiple marks, regardless of
Applicant’s extraneous assurances to the contrary.
Public policy interests counsel against allowing Applicant the wide latitude it
seeks to protect multiple configurations of goods with a single registration. In Wal-
Mart Stores v. Samara Bros., 529 U.S. 205, 215 (2000), the Supreme Court was
concerned with “plausible threats of suit against new entrants.” The phantom

4 4 TTABVUE 8 (Applicant’s Brief).
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elements in Applicant’s mark and resulting lack of adequate notice of the claimed
mark would generate the same concern.
Accordingly, we affirm the refusal to register on the ground that the changeable
elements in Applicant’s proposed mark result in multiple marks that cannot be
protected in a single registration.
III. Drawing and Description of the Mark
An application for a product configuration mark must include an accurate drawing
and description of the mark. See 37 C.F.R. §§ 2.37 & 2.52(b)(2) & (4) (description
requirements for three-dimensional marks) and § 2.51(a) (requiring a drawing that
is “a substantially exact representation of the mark”); Trademark Manual of
Examining Procedure (“TMEP”) § 1202.02(c) (April 2017). On the basis that the
drawing and current description of the mark encompass more than one mark, the
Examining Attorney made final requirements for an acceptable drawing and
description.5
In Hayes, 62 USPQ2d 1443, 1444 (TTAB 2002), the Board affirmed a description
requirement where the description stated that the drawing showed a “representative
pattern of colors,” “but no claim [wa]s made to a particular pattern of the three colors.”

5 Pursuant to Rule 2.52(b)(4), broken (or dotted) lines may be used to show placement of a
mark, such as on the goods or packaging on which it appears, or such lines may “show any
other matter not claimed as part of the mark.” 37 C.F.R. § 2.52(b)(4). Although the September
15, 2014 Office action required an amended description indicating, inter alia, that the broken
lines “serve[] only to show the position or placement of the mark,” that characterization does
not seem appropriate in the context of this mark. Rather than indicating the position or
placement of the mark, as indicated in Applicant’s original description, these broken lines
appear to serve the more unusual purpose of indicating that the length of the lines is not
claimed as part of the mark, because Applicant wishes to reserve the possibility of varying
the lengths.
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The Board held that “applicants’ description of the mark is unacceptable in that it
describes more than one mark.” Id. at 1445. In In re Elvis Presley Ent, Inc., 50
USPQ2d 1632 (TTAB 1999), the Board affirmed a drawing requirement where the
drawing consisted of “the likeness and image of Elvis Presley,” which would include
all of the different poses of Elvis Presley, on the ground that the drawing
encompassed more than one mark and was, therefore, unacceptable.
The drawing and description requirements in this case flow from Applicant’s
attempt to register more than one mark in a single application. For that reason, based
on our conclusion discussed above, both the drawing and description of the mark are
improper. Therefore, the requirements for an acceptable drawing and description are
appropriate.
Decision: We affirm the refusal to register and the requirements for an
acceptable drawing and description of the mark.