Phantoms, zombies and the big problem with trademark use (Best of 2017)
Originally published May 30, 2017.
I’ve got trademark use on the brain!
Maybe it’s the Belmora effect — the result of living in a world in which use of a trademark in a country that is not the U.S. gets you a Lanham Act claim under 43(a) in the U.S.
Who can blame me? It’s boggling my mind and making it soft, this trademark-use business. As I mentioned in my brief appearance at INTA last week in Barcelona —
— Erik Pelton® (@tm4smallbiz) May 18, 2017
— er, thanks, Erik — it’s not just that the erosion of use as the sine qua non of trademark rights in the U.S. is (mainly) a judicial, not legislative, phenomenon. Never mind that it’s part of a trend that’s been accelerating since the New Deal. And don’t pay any attention to the Fourth Circuit’s odd place at the center of decisions that cut away at traditional notions of standing. For the purposes of an INTA talk, the point is that these changes are affecting how trademarks are made, kept and enforced in the U.S.
And now I’m starting to think I see this trademark-use erosion everywhere, like a ghostly companion I can’t shake. Once you remove use from the equation of what is a trademark — or permit gauzy definitions and fill-in-the-blank formulations — you also elide the distinction between “defining” a trademark and “using” it. And this can present quite a challenge when assessing the metes of bounds of trademark claims, both for an existing “user” or a prospective one.
Let’s consider, first, “phantom marks” — strictly defined, as we shall see.
The case comes via John Welch, who, even on the eve of his departure to Barcelona — where, as usual, he killed it — published this post about phantom marks, his spirit hovering over the TTABlog even as he and and his better half were hovering safe and dry above the Atlantic. The case is In re Construction Research & Technology GmbH, Serial Nos. 86433989 and 86434029 (May 17, 2017), a happy rejection of what the Board saw as an attempt to register a phantom mark:
The Board affirmed refusals to register the marks NP— and SL — for “sealant compounds for joints,” finding them to be “phantom” marks and thus ineligible for registration. The “variable designation —” in each mark “represents up to three numeric digits.” . . .
Under the Trademark Act, an application may seek registration of only one mark. “A mark that contains a changeable or phantom element resulting in possibly more than one mark is generally refused registration.” In re Primo Water Corp. 87 USPQ2d 1376, 1378 (TTAB 2008). The CAFC explained the reasoning for this rule:
[T]he mark, as registered must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark. ‘Phantom’ marks . . . 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. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999).
John discusses the matter with his usual sober thoroughness at the post, and as usual I leave it to him and his learned commenters to flesh out how this “precedential” decision did or did not change the understanding of phantom would-be markery. The point for my purposes is, yes, the line holds: No phantom marks, because “the mark, as registered must accurately reflect the way it is used in commerce.” Use is the word!
But let’s not get too excited. Because, after all, how different, really, are phantom marks from “families of marks“? Properly utilizing the TTABlog as a definitive reference guide to trademark law, we can say yes, they are not conceptually unrelated, for a family-of-marks claim will fail if it looks too too much phantom-like, to wit (citations etc. omitted this time and emphasis added):
Mere ownership of a series of similar marks does not suffice to establish a family of marks. To prove the existence of a family of marks, [an applicant is] required to show that the purported family (1) has a recognizable common characteristic, (2) that is distinctive, and (3) that has been promoted in such a way as to create recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services….
[A]lthough it is theoretically possible that a common structure could be the common element of a family of marks, [a] structure [that is] “is too abstract to constitute a common characteristic that could give rise to a family of similarly-structured marks” . . . would pave the way for [for an applicant] to “enforce almost any descriptive word in the dictionary [with the same structure]. This would create and unacceptable risk to competition, and would be analogous to a phantom mark.
So, ok. No family of mark marks allowed if they they’re so swiss-cheesy that they’re holely incoherent.
But the TTAB has made it clear that on sufficient proof of the other components, that’s an outlying limitation. Alternatively, then, if you enunciate your family values artfully enough, you can reserve a place at the table for unborn lives not in being. Right: not only can you register trademarks you’ve never used, you can stop others from using them — um, “them” — if they encroach closely enough on the family plot.
That sounds like warehousing, though, which we know is not allowed. So let’s not go there. Besides, warehousing involves some use. Here, the unborn little runt of a mark isn’t even a gleam in the marketing department’s eye.
So aren’t these unused, not-even-aspirational family-of-marks children not…
OK, maybe there’s something here. Did you hear something in the attic?
No, that was just the wind. Tell me a story. Okay, um, does this have anything to do with something else we’ve read about in trademark chatter called a “phantom tag”?
Not quite. I told you I could use the TTABlog as a reference tool for trademark law — not that you could use LIKELIHOOD OF CONFUSION® that way. That’s a serious trademark law blog. This is a fun blog! But you’re presumably thinking of this post, in which I referred to “the TTAB’s phantom tag” in a post that also (like, um, a large percentage) launched from one of John’s clear academic analyses about a situation where the TTAB bestowed on a term never used as a trademark what we might call a long tail as grounds to prevent its registration by a stranger:
Applicant conceded that the phrase THE HOUSE THE RUTH BUILT, as used by the press and public, is famous as referring to Yankee Stadium, but it contended that the phrase is not famous as a trademark. . . .The Board found that opposer’s “use of its stadium, which Applicant admits had been known by the nickname THE HOUSE THAT RUTH BUILT since the 1920s, has resulted in widespread recognition of that mark [sic] in association with Opposer’s baseball services.” Extensive media coverage confirmed the fame of the mark.
Does that sound right to you? This strikes me as a sort of sub rosa trademark-tacking, or perhaps fame-tacking, business. The TTAB’s argument doesn’t actually address the Applicant’s point: Is THE HOUSE THAT RUTH BUILT famous as a trademark, such that Applicant’s proposed registered trademark would dilute its famous secondary meaning? . . .
It appears . . . that if you’re famous (as the Yankees are), and you’ve got famous trademarks (such as the Yankees do), that’s close enough to include your not-so-famous-trademarks as famous, too, when you want the benefits afforded famous marks. And that includes refusal to register by the PTO on grounds of likelihood of dilution.
In baseball they call that a “phantom tag.”
Is this phantom tagging, a snarky way to express something analogous to trademark tacking, so different from phantom trademarks? Well, of course, tacking involves a change in the mark itself over time. That certainly involves use. In contrast, what the TTAB did with the HOUSE THAT RUTH BUILT non-trademark was grant it trademark status via use as a … something else. Nickname. Associational concept. Something.
Sounds phantomy to me. Scared yet?
Is there more of this?
How about zombie marks? Wasn’t there something about zombie marks?
Yes, there was, not quite the same problem, but, yeah, related:
Says Pamela Chestek, of the Property, intangible® blog:
I haven’t written about “zombie” or “heritage” marks in a long time. . . .
Defendant Strategic Marks is in the business of trying to revive “zombie” brands, or brands that have been abandoned but still have name recognition with consumers. It filed trademark applications for the department store names and started a “Retro Department Stores” website, selling T-shirts with the retro branding on them. Macy’s sued in two different lawsuits. . . .
Macy’s successfully defended the validity of the marks on a theory of “secondary source,” explained this way:
It is a matter of common knowledge that T-shirts are “ornamented” with various insignia, including college insignias, or “ornamented” with various sayings such as “Swallow Your Leader”. In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, “Swallow Your Leader” probably would not be considered as an indication of source.
The “ornamentation” of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source. . . .
If the department store doesn’t exist anymore (putting aside for the moment that there wasn’t an abandonment theory before the court), meaning there is no primary use of the mark, how can the secondary source justification for the validity of the mark on promotional goods still apply?
Pamela then explains how “secondary source” protection works. Registrations for the marks were granted when the respective department stores were still in business, then renewed for additional “secondary” uses with the examining attorney “expressly relying” on the mark already having achieved distinction “for the same or related services.”
So, zombie marks, see, are another scary way non-corporeal trademark “use” — not use of this world (i.e., not use as trademark law has traditionally defined it) — has been invoked dubiously to award a legacy stakeholder a right in gross in a trademark with respect to goods for which it has no legitimate use-based claim.
Let’s face it, the “secondary source rule” is trademark dilution for un-famous, but still big, trademark claimants.
Which, you may notice, tend to be the winners in these different varieties of phantom trademark contests. In trademark law, it seems “too big to fail” is the rule.
In sum, if you’re big enough, non-use is use enough to stake out trademark claims and prevent competition — via use in another country, or through gauzily-conceived “fame,” or family “planning,” or “secondary use” on garbagio goods that (properly) wouldn’t be accepted as “trademark use” by a little guy.
At the end of the day, the PTO, the TTAB and even federal district judges seem not to be all that concerned about how you went about using a trademark when evaluating the parameters of your trademark rights as long as your mark is the one they’ve heard of.
So are “phantom marks” allowed, or not? Is this a “big” problem?
Or am I just seeing things?