Ghosted. The Truth about Phantom Trademarks

Hey, geniuses, let me ask you a question. How you ever been ghosted? I’m not gonna lie. We have been ghosted all the time. Like it happens. It happens usually after we quote our prices, but it’s fine because that’s just something that we have to work on, on our end. Like we have to do a better job of reaching qualified leads. And we’re working on that. We have things in process for tweaking. I was going to say tweaking and twerking, but we’re not twerking sometimes, but not, no, we’re not twerking.  We’re tweaking some things, right? So that we can communicate our message and draw in the people who are ready to work with us and being ready to work with us means being able to pay our prices.  

Today’s episode is not about conversations that ended when we communicated our fees or other boundaries. It’s not even about how to attract better leads. Today we’re discussing the phenomena that are phantom trademarks. What are phantom trademarks?  Keep listening to find out what they are, why they’re so darn tricky, and how you can possibly get yours registered. 

Welcome to episode 116 of the Own Genius podcast. Well, we’re talking all about being ghosted. Wait, not ghosted as in ghosts, but phantom, phantom trademarks. So let’s talk about what they are. Have you ever seen those websites or maybe marketing that has a word or a phrase that’s constant, but then what either comes before it or after, it changes depending on the use? 

For example, there’s a mattress company that has several locations.  One may be 334 mattress and the other one may be 205 mattress and the third one may be 404 mattress, etc. And that variable in this case is the area code.  334 is Montgomery area code, 205 Birmingham, and 404 Atlanta. That’s what I’m talking about when I say you have an element of the trademark that changes. 

The business owner in an effort to protect their brand, in a really efficient manner. They chose to register … mattress, where the dots indicate the matter of the subject to change. Wait a minute, snap. I can do that. I see your wheels turning and I see you thinking hey, this is sweet, but I want you to beware. Applications like these, the ones that have that variable element that changes, especially if that variable part has too many potential variations. Now if this happens, it makes it difficult, if not really impossible, for the examining attorney to do their job, which is to look for conflicting trademarks. That’s their job. If you think about it, trademarks protect brand identifiers. That protection is limited to the marks that are same or similar to other trademarks in that same or related field. 

 If a significant part of that trademark is allowed to change without restrictions or even if it has restrictions, like the combination of possible variations is so many that they can’t, that the examining attorney or even other brands for that matter, like we wouldn’t know what likelihood of confusion exists because there’s so many changes that it essentially can create a new mark or new meaning or leave a different commercial impression on consumers. So how would that work? Like how would you be able to get a trademark for that? And the answer is you wouldn’t.

So what is a phantom trademark? A phantom trademark is one where there’s

• a significant element of a trademark
• and is subject to change
• and it has so many potential variations that different configurations could create several different commercial oppressions. 

That’s it. So the fact  that you have the element that’s a variable doesn’t make it a phantom trademark. It’s the fact that it has so many potential variations that it just, it can create different marks. 

 If we go back to our original example, the mattress example, that trademark was allowed to register because when they found the application, they said that the variable was limited by area codes, a set number. Those numbers are set. There are only so many area codes and those are created by somebody else.  They were like, okay, you can register because we know, at least we know what to search for. 

 On the other hand, there was a company that wanted to register something like SP… and they also wanted to register MP… and it was for some type of sealant. And in this case, the dots represented a variation of three numbers. And I know you’re like, okay, sweet, we just did that area codes to three numbers, here’s another company that wants to do three numbers, so it shouldn’t be a problem, right? Wrong. Because in this case, the application was rejected because, unlike the area codes, the numbers weren’t limited in any way. So now they’re just saying that you have this SP or NP followed by three numbers. Any combination of those numbers. It was not limited, which means there were thousands of potential combinations, thousands. 

So we can see why that will be very difficult for an examining attorney or even another business owner to be like, hey, are we conflicting with this mark? We don’t know. And so if you’re thinking about using something like where you have a significant element that changes, I just want you to be mindful that on top of case law, that is very conflicting. And that case law is where lawyers and examining attorneys and judges, go back to say, hey, is this something that we can do? Has anyone done it before? And why were they able to do it? So you have one court saying one thing, you have another court saying another thing, and that’s where the conflict comes in. But in addition to that, you also have to be mindful of the examining attorneys who are looking at your applications with these variable elements because they look at it with more scrutiny, which could cause your application to be rejected. And if it’s rejected, you know, that first is not necessarily, hey, okay, we tried and we didn’t succeed. It’s more of a, okay, this is why we don’t believe you should get your, this is why your application should not be registered. And then it’s up to you or your attorney to put forth an argument which will persuade the examining attorney to change their mind. And if that doesn’t work, at the end of the day, you can always file an appeal.  It’s going to take additional effort to get it registered if you’re even able to get it registered. And that, geniuses, is what a phantom trademark is.  

So knowing what you know now, how likely are you to use trademarks with a bearable element? Let me know in the comments. And if you’ve already successfully registered your trademark with that element that changes, we want to know that too.