Phantom Trademarks: Good Law or Chain Rattling? The Negative Effects of Strict Interpretation of the Lanham Act in the International Flavors and Fragrances Decision

Journal of Intellectual Property Law Volume 8 | Issue 1 Article 3 October 2000 Phantom Trademarks: Good Law or Chain Rattling? The Negative Effects of Strict Interpretation of the Lanham Act in the International Flavors and Fragrances Decision James E. Carlson Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Constitutional Law Commons, and the Intellectual Property Law Commons Recommended Citation James E. Carlson, Phantom Trademarks: Good Law or Chain Rattling? The Negative Effects of Strict Interpretation of the Lanham Act in the International Flavors and Fragrances Decision, 8 J. Intell. Prop. L. 53 (2000). Available at: https://digitalcommons.law.uga.edu/jipl/vol8/iss1/3 This Notes is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Carlson: Phantom Trademarks: Good Law or Chain Rattling? The Negative Effe NOTES PHANTOM TRADEMARKS: GOOD LAW OR CHAIN RATTLING? THE NEGATIVE EFFECTS OF STRICT INTERPRETATION OF THE LANDHAM ACT IN THE INTERNATIONAL FLAVORS AND FRAGRANCES DECISION I. INRODUCTION The issue of Phantom Trademarks was one of first impression in the Court of Appeals for the Federal Circuit in the case of In re International 1 As its name suggests, International Flavors and Flavors and Fragrances. Fragrances (1F is a producer of flavor and fragrance essences for use in a variety of food and chemical products.2 This litigation was prompted when IFF submitted three trademark applications to the Patent and Trademark Office (PTO).3 These marks included "LIVING XXXX FLAVORS," "LIVING XXXX FLAVOR," and "LIVING XXXX," and were intended to protect a large number of individual products produced by IFF.4 For example, IFF intended its "LIVING XXXX FLAVOR" to cover a number of flavors or scents of herbs, fruits, plants or vegetables, with the "XXXX" notation simply standing in place of the desired product.' The applications were rejected by the PTO, the Trademark Trial and Appeal Board, and finally by the United States Court of Appeals for the Federal Circuit.6 The reasoning of these bodies was that the marks submitted by IFF were known as "Phantom Trademarks," a term of art, In re International Flavors and Fragrances, 183 F.3d 1361,51 U.S.P.Q.2d (BNA) 1513 (Fed. Cir., 1999). 2 Id at 1361. Ii InternationalFlavors, 183 F.3d at 1361. Published by Digital Commons @ Georgia Law, 2000 1 Journal of Intellectual Property Law, Vol. 8, Iss. 1 [2000], Art. 3 J. INTELL. PROP.L. [Vol. 8:53 based on their intended use to protect more marks than those actually presented on the applications! This served as the basis of the court's final rejection of the applicant's proposed marks! The court, under a de novo review standard, heard IFF's appeal from the decision of the PTO review board and rejected IFF's contentions that the marks were sufficient to warrant registration.9 The court noted, among other reasons, that the marks would be essentially too difficult for future applicants to find when researching potential marks, since the full marks as used in commerce would not be on the trademark registry in their entireties, but rather would be variations on the framework-style marks proposed by IFF in its applications.1 " Therefore, the court affirmed the Board's assessment and rejected IFF's trademark applications. The purpose of this Note is to explore the issue of trademarks dubbed "Phantom Trademarks" by the PTO. The discussion will focus on the case 12 as it provided of In re InternationalFlavors & Fragrances, a matter of first impression in the Federal Circuit." The central issue for discussion here, however, is the argument that the Court was incorrect in its interpretation of the law concerning these marks. As noted in the principle case, this is an issue that was one of first impression in the Federal Circuit, which leaves very little precedent from which to draw as to the central issue. Thus, in order to properly resolve this issue, one must look to precedent regarding the collateral concepts which comprise the subject of trademarks and trademark registration for guidance as to the proper resolution of this issue. Additionally, the historical basis, practical implications, and legislative history function to fill the remaining voids and provide the framework necessary to paint a full image of this issue and inform the reader of the current state of affairs in trademark law. Consequently, this consideration will extend further to the resulting implications on the successful registration, maintenance, and defense of commercial trademarks. Id at 1364. Id at 1365. Id at 1364-65. 0 Id at 1366-67. u InternationalFlavors, 183 F.3d at 1365. I1 d '3 IlL https://digitalcommons.law.uga.edu/jipl/vol8/iss1/3 2 Carlson: Phantom Trademarks: Good Law or Chain Rattling? The Negative Effe 2000] PHANTOM TRADEMARKS I. INTERNATIONAL FLAVORS AND FRAGRANCES, INC.: ITS BUSINESS, ITS CONTENTIONS, AND THE RESPONSE OF THE FEDERAL CIRCUIT A. THE BACKGROUND AND BUSINESS OF INTERNATIONAL FLAVORS AND FRAGRANCES International Flavors and Fragrances is a New York corporation which produces flavor and fragrance oils for use in finished products such as foods, tobacco, chewing gum, oral care products, beverages, colognes, cosmetics, toiletries, laundry care products, and air fresheners. 1" As IFF produces a vast array of individual essences, it sought to protect its entire line of similar products through the use of three blanket applications, in which the "XXXX" symbol was intended to represent the name of the particular flavor or fragrance essence used in each individual product."5 The intent of this was that all such essences would thereby be protected against misappropriation by other manufacturers by a single, standard trademark. The first applications were rejected by the examining attorney because the specimens submitted did not contain an "XXXX" element.16 IFF then entered disclaimers for the terms 'FLAVOR' and 'FLAVORS, "' 7 stating that it made no claim to the use of those terms outside the context of the mark as shown in the applications. 8 Furthermore, IFF amended the applications to indicate that the "XXXX" symbol was not part of the mark, but rather an undefined term representative of the specific flavor and essence names to be inserted in the mark's framework.' 9 The Board nevertheless denied the applications, noting that the issue regarding the technical uses of those terms 14Id. "' Id These applications, designated "LIVING XXXX FLAVORS," "LIVING )CXXX FLAVOR," and "LIVING XXXX," were intended to cover all essences, with each of the three marks designed to protect a particular type of essence. 'LIVING XXXX FLAVORS" and "LIVING XXX FLAVOR" sought to protect essences for use in food prod (...truncated)