Phantom trademarks – What are they?

An anomaly to our Indian trademark law is the concept of Phantom marks. Phantom trademarks are marks containing elements such as words, designations or phrases that are unfixed. It might incorporate a date, geographic location or model number that is changeable. The phantom elements which add as variable component may refer to any context. The Applicant represents the changeable or phantom element by inserting a blank, or by using dots, dashes, underlining or designation such as XXXX. A well-known example for phantom registration is the “—- FOR DUMMIES”, an extensive series of instruction/reference books, where the dotted line represents different descriptive terms which varies according to the subject matter of the book. The DUMMIES series ranges from “Accounting for Dummies”, “529 and other college saving plans for Dummies”,”15-Minute workout for Dummies”, “Acid-Alkaline Diet for Dummies” and so on , having more than 2,700 titles in the market.

Phantom registrations are less expensive and less complicated. The Applicant relies upon one single mark rather than spending money to register a host of variations on a particular theme. On the event of registration, the phantom mark enjoys protection as that of the traditional marks, obtaining exclusive nation-wide rights for every potential combination including those that shall be used in future.

Position in the United States of America:

The concept of phantom marks was, once well recognized in the United States of America but are being criticized off late due to the fact that they violate the rule, that an applicant may apply for only one mark in a single trademark application and also stresses upon the fact that there is no adequacy of constructive notice and fundamental fairness. In Re Int’l Flavors & Fragrances Inc., the Court of Appeals for the Federal Circuit (CAFC), upheld the United States Patent and Trademark Office’s refusal of the marks LIVING xxxx, LIVING xxxx FLAVOR, and LIVING xxxx FLAVORS for essential oils, flavors, and fragrances, where “xxxx” stood for a particular herb, fruit, plant, or vegetable. The court pointed out that under law “registration of a mark on the principal register shall be constructive notice of the Registrant’s claim of ownership”. It stated that “In order to make this constructive notice meaningful, the mark as registered must accurately reflect the actual mark used in commerce, so that anyone searching the register for a similar mark will locate the registration. A phantom mark is not able to serve this function because its variable elements encompass far too many permutations to make a thorough and effective search possible.  Ultimately, registration of phantom marks does not provide adequate notice to competitors and the public.”

The CAFC in another instance upheld the validity of phantom marks and also put forth the condition that the possible permutations of the unfixed element be limited to make it a good mark. In re Dial-A-Mattress Operating Corp., where the applicant filed an application to register the mark 1-800-MATTRESS, with “800” appearing in dotted lines under class 35 for telephone shop-at-home retail services and retail store services in the field of mattresses and bedding, namely sheets, mattress pads and pillows, which included the statement that “the drawing is lined to indicate that the area code will change”, the court held that not all phantom marks are prohibited, per se, from registration and also pointed out that the registered mark should be used to demonstrate secondary meaning for the subject application and that the registered mark remains valid despite its ghostly element because the possible permutations of the element were limited.

Thus phantom marks in USA are allowed for registration provided the possible permutations of the unfixed elements are limited.

Position in India:

Phantom mark registrations are not recognized in India. It is easy to see why a phantom mark registration would be advantageous. Less work, less complicated and less expensive, but the position in India is such that the essential features of a mark is taken into consideration while deciding an infringement suit giving the concept no scope to be recognized. Let us consider the above illustration, “—— FOR DUMMIES” when registered in India, the essential part of it, i.e. FOR DUMMIES will be considered to prove infringement leaving no scope for the concept of phantom registration to persist. In a recent case: M/S S.M. Dyechem Ltd vs M/S Cadbury (India) Ltd, the Apex court of India has held that “A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its essential features“. It was also held that “it is clear that a mark is infringed if the essential features, or essential particulars of it, are copied” and the presence of even one essential feature in the infringer’s mark is sufficient to prove the infringement.


Phantom trademark registration in a way is a boon and India which is en route to overtake China to claim the position as the world’s fastest growing economy should in my opinion adopt concepts favourable to the industrial players. Phantom mark registration gives an umbrella protection to all the potential combinations including the future ones under one application but is also unfair for the fact that it does not give adequate notice to the public or the competitors. Just as the CAFC held, the registration of the phantom marks can be allowed provided there is limited permutations of the unfixed elements so that the same can be foreseen making it simple for the public and the competitors to judge as to what the unfixed elements would be.

In a country like ours where the essential feature of a mark is given importance, the concept of registration of phantom trademarks has no part to play. The law as it stands today doesn’t encourage Phantom marks though its cost effectiveness and simplicity of procedure could help ease the burden of many a trademark owner. Unless and until the Indian trademark law accepts the “Phantom” it will loom as a curse upon trademark owners.

This article has been authored by Jayashri Suresh, an IP Law practitioner.