Ocean Enterprises, Inc.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75469984 (T.T.A.B. Jun. 19, 2001)

6/19/01 Paper No. 14
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
Trademark Trial and Appeal Board
_______________
In re Ocean Enterprises, Inc.
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Serial No. 75/469,984
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Allan M. Loew of Loew, Hauptman, Gopstein, Gilman & Berner
for Ocean Enterprises, Inc.
Rudy R. Singleton, Trademark Examining Attorney, Law Office
109 (Ron Sussman, Managing Attorney).
_______________
Before Cissel, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Ocean Enterprises, Inc. (applicant) seeks to register
THE PUBS OF ------- for “t-shirts and sweatshirts.” The
application was filed on April 20, 1998 with a claimed first
use date of September 1989. While the application did not
make specific reference to Section 2(f) of the Trademark
Act, the application did contain a statement that “the mark
has become distinctive of the goods of applicant as a result
of substantially exclusive and continuous use thereof by
applicant for over five years.” At page 2 of his brief, the
Examining Attorney acknowledges that “the application was
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/469,984
filed under Section 2(f) of the Act.”
The Examining Attorney has refused registration on two
grounds. First, the Examining Attorney contends that
applicant is impermissably seeking to register a “phantom”
trademark. Second, citing Trademark Rule 2.72, the
Examining Attorney contends that applicant’s drawing
depicting the mark THE PUBS OF ------- is materially
different from any of the trademarks depicted in applicant’s
specimens of use, such as THE PUBS OF DENVER and THE PUBS OF
PALM SPRINGS. Continuing, the Examining Attorney argues
that applicant cannot amend its drawing to insert the name
of a particular geographic location in lieu of the seven
dashes because this would constitute a material alteration
of the drawing which is prohibited by Trademark Rule 2.72.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a hearing.
We consider first the refusal based upon the Examining
Attorney’s contention that applicant is impermissibly
seeking to register a “phantom” trademark. Our primary
reviewing Court has defined a “phantom” mark as follows: “A
’phantom’ trademark is one in which an integral portion of
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the mark is generally represented by a blank or dashed line
acting as a place holder for a generic term or symbol that
changes, depending on use of the mark.” In re International
Flavors & Fragrances, Inc., 183 F.3d 1361, 51 USPQ2d 1513,
1514 at footnote 1 (Fed. Cir. 1999). Applicant acknowledges
that the dashes in its drawing represent different
geographic locations. (Applicant’s brief page 1). Indeed,
applicant admits that as of “the time the application was
filed, applicant had sold THE PUBS OF ------- shirts with 89
different [geographic] locations, as specified on the
specimens.” (Applicant’s brief page 2). Applicant also
states that as of the time of its appeal, it was currently
selling “THE PUBS OF ------- shirts for 138 different
[geographic] locations.” (Applicant’s brief page 2).
In view of the foregoing, it is clear that applicant’s
mark as depicted in its drawing (THE PUBS OF -------) is a
phantom mark. Our primary reviewing Court, referencing
Section 1 of the Trademark Act, has made it clear that “a
trademark registrant may seek to register only a single mark
in a registration application, and trademark applications
seeking to register ’phantom’ marks violate the one mark per
registration [application] requirement.” International
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Ser. No. 75/469,984
Flavors, 51 USPQ2d at 1518.
Accordingly, the refusal to register on the basis that
applicant is seeking to register a phantom mark is affirmed.
Applicant attempts to distinguish the facts of this
case from the facts of International Flavors by arguing that
the marks in International Flavors “were much more nebulous
than the mark sought to be registered by applicant.”
(Applicant’s brief page 5). Applicant’s reasoning is
fatally flawed for two reasons. First, even if the dashes
in applicant’s drawing represented just two different
geographic locations, applicant’s proposed “mark” would
still violate the one mark per application requirement set
forth by the Court in International Flavors. 51 USPQ2d at
1518. Second, in reality, there are literally hundreds of
thousands of geographic names for various countries,
territories, provinces, states, cities, towns and streets.
(The foregoing does not even count the plethora of
geographic names for various physical features such as
oceans, gulfs, bays, rivers, mountains etc.). We will not
speculate as to whether the number of geographic names is
greater than or less than the number of names of various
herbs, fruits, plants and vegetables, the phantom elements
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Ser. No. 75/469,984
in the International Flavors case. Suffice it to say that
the number of geographic names is so vast that applicant’s
statement at page 7 of its brief that a member of the public
would have no problem in conducting a trademark search if
applicant obtained a registration of THE PUBS OF -------
covering all geographic locations is simply not plausible.
Before leaving the issue of the phantom mark refusal,
one comment is in order. At pages 3 and 6 of its brief,
applicant appears to be arguing that it seeks to register
but a single mark, namely, THE PUBS OF. Applicant states
that many of its customers refer to its different shirts as
THE PUBS OF shirts “without using a place identifier.”
(Applicant’s brief page 3). In this regard, applicant makes
reference to the declaration of its president (William
Regan) wherein Mr. Regan states that applicant has sold
approximately 1,400,000 of its THE PUBS OF------- shirts and
that applicant’s customers consider applicant’s THE PUBS OF
------- shirts as coming from a single source regardless of
the place identifier on the shirt. Two points need to be
clarified. First, for the reasons set forth in this Board’s
order of September 15, 2000 the declaration of Mr. Regan was
not properly made of record in this proceeding. While we
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Ser. No. 75/469,984
have read the declaration, we have given no weight to it, as
requested by the Examining Attorney. Second, to the extent
that applicant’s customers view the three word term THE PUBS
OF as referring solely to applicant, applicant is quite free
to file an application seeking to register just these three
words without any place identifier.
As for the second ground of refusal, that applicant’s
drawing featuring THE PUBS OF------- differs materially from
the marks shown on applicant’s specimens, we agree with the
Examining Attorney that there is a material difference, and
that hence applicant cannot be permitted to amend its
drawing to feature one of the actual marks shown on its
specimens, such as THE PUBS OF DENVER. Obviously, the mark
THE PUBS OF DENVER differs materially both from the mark
shown in the drawing (THE PUBS OF --------) or simply THE
PUBS OF.
Likewise, applicant cannot submit a substitute specimen
conforming to the drawing THE PUBS OF ------- because, as
applicant states at page 4 of its brief, applicant “has
never sold a shirt with the mark THE PUBS OF -------.”
Finally, we would be remiss if we did not note that in
support of its request to amend its drawing, applicant cites
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Ser. No. 75/469,984
In re ECCS Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir.
1996). Applicant’s reliance on this case is misplaced
because effective October 30, 1999 the Trademark Rules were
changed to make it clear that “amended Trademark Rule 2.72
prohibits any amendment which materially alters ‘the mark’
and amended Trademark Rule 2.52(a) clarifies that ‘the mark’
sought to be registered is the mark which appears on the
drawing.” In re Who? Vision Systems Inc., 57 USPQ2d 1211,
1217 (TTAB 2000).
Decision: The refusal to register on both grounds is
affirmed.
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