Re: title protection?

On Tue, May 23, 2000, Kevin Grierson <kgrierson[_at_]wilsav.com> wrote:
>
> regarding your "for Dummies" example, although I see the logic in
> what you're saying, I thought that "phantom marks" (i.e. a mark
> with a blank to be filled in, as in "________ for Dummies") was
> not supposed to be registrable, although a few have slipped by
> the PTO.

Good point, but FOR DUMMIES is not a phantom mark, since it was not registered as "___ FOR DUMMIES" but simply as FOR DUMMIES. This is a little tricky, but bear with me:

In a "phantom mark" registration -- which is no longer accepted by the Trademark Office, by the way -- the applicant maintains that it owns numerous trademarks, an indefinite number, actually, in the form of a word mark with one "blank" in it, representing a variable term. The idea is that, no matter what is in that blank, the resulting entire phrase is a trademark entitled to the benefits of registration. Thus the "phantom mark" HONEY -- ESSENCE SHAMPOO would mean that the owner had full trademark rights in HONEY STRAWBERRY ESSENCE SHAMPOO, HONEY CHERRY ESSENCE SHAMPOO, HONEY AVOCADO ESSENCE SHAMPOO, etc. -- each of these being a separately protectable mark.

In the FOR DUMMIES case, by contrast, the owners do not claim that any individual title INTERNET FOR DUMMIES, VISUAL BASIC 6 FOR DUMMIES, SEX FOR DUMMIES is a trademark. Those are merely individual book titles. They claim only that FOR DUMMIES is a trademark, serving a source-identifying function whenever it appears on the cover of a book.

Similarly STAR WARS is a trademark, but not a, so to speak, "phantom mark." Each book in the many STAR WARS series bears the trademark STAR WARS, but LucasFilm does NOT claim multiple trademarks consisting of the words STAR WARS in conjunction with any additional variable term or terms that might constitute the title of one of those books.

As a point of interest, International Data Group DOES have multiple trademark applications and registrations in the FOR DUMMIES family of marks; but these do not extend to the titles of individual works, only to the series trademark (FOR DUMMIES), supporting slogans (FOR DUMMIES BESTSELLING BOOK SERIES FROM IDG; FOR DUMMIES A REFERENCE FOR THE REST OF US), and the trademarks of certain sub-series such as CROSSWORDS FOR DUMMIES, CLASSICS FOR DUMMIES and GUITAR FOR DUMMIES.

> Robert C. Cumbow
> Graham & Dunn, P.C.
> 1420 Fifth Avenue, 33rd Floor
> Seattle, Washington 98101-2390
> Phone: 206-340-9619
> Fax: 206-340-9599
> E-mail: rcumbow[_at_]grahamdunn.com
> Website: http://www.grahamdunn.com/
>

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