When can the issues of trademark mutilation and phantom marks become a problem?

Whenever there is a discrepancy between the mark drawn in the application and the specimens showing actual use of the mark, the issues of trademark mutilation and phantom marks may come into play. As discussed in further detail below, mutilation refers to the removal of certain elements while a phantom mark refers to a changeable or variable element in the mark.

What is trademark mutilation?

Trademark mutilation refers to an application drawing that omits certain components of the mark as used in commerce. In other words, the trademark in the application has been mutilated because the drawing cuts out details of the mark as shown in use. The TMEP also refers to this situation as an incomplete representation of the mark.

Are all incomplete representations necessarily mutilated?

No, it may be possible to leave out certain details that are not essential and integral subject matter. The general rule is that the drawing in the application must be a substantially exact representation of the mark as used or to be used. The exception to this rule is that the specimen of use may contain minor alterations so long as the application drawing creates a separate and distinct commercial impression.

What are examples of minor alterations considered acceptable by the USPTO?

The case of In re University of Miami 123 USPQ2d 1075 (TTAB 2017) provides helpful examples of acceptable minor alterations that were not mutilated marks. In that case, the University of Miami applied to register a mascot of a bird wearing a particular uniform without wording:

Application drawing

The specimens of use filed in the application showed the following mark (notice the “U” on the hat, “MIAMI” on the shirt, stripes on arms and sides of shirt):

Specimen

The TTAB held that the specimen was acceptable because the alterations were minor. The application drawing created a separate and distinct commercial impression.

Other examples of acceptable minor alteration that did not lead to mutilation include:

Application drawing
Specimen showing additional wording on can
Application drawing
Specimen showing additional outline and wording on bottom gear

What is a phantom mark?

A mark that contains a changeable or variable element (i.e., phantom element) may be considered a phantom mark. Phantom marks are unregistrable because they violate the rule that a trademark application may only seek to register a single mark. In re Int’l Flavors Fragrances Inc., 183 F.3d 1361 (Fed. Cir. 1999).

Examples of unregistrable phantom marks include application drawings with dashes (–) or X’s (XXXX) to denote numbers and letters that can fill in the blank:

  • SHAPE XXXX for educational publications
  • NP— and SL— for sealant compounds for joints

What is not a phantom mark?

The line seems a bit fuzzy between unregistrable phantom marks and registrable marks that contain blank spaces. For example, the rental car Enterprise logo was held as registrable and not a phantom mark . . .

Application drawing

even though the specimens of use showed additional wording in the blank space underneath “enterprise”:

Specimen for Class 36
Specimen for Class 39

Beware of trademark mutilation and phantom marks

The doctrines of trademark mutilation and phantom marks often go hand-in-hand, especially when the trademark in the application shows a blank space or removes certain design features. Keep in mind that tradmeark mutilation refers to the removal or severance of features, while a phantom mark refers to a changeable element that could lead to multiple marks.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com