Dana Limited

Trademark Trial and Appeal Board

Jan 30, 2014

No. 85447797 (T.T.A.B. Jan. 30, 2014)

Mailed: Hearing:
January 30, 2014 January 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Dana Limited
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Serial No. 85447797
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John A. Borell, Jr. and Stephen P. Evans of Marshall & Melhorn,
LLC for Dana Limited.

Benji Paradewelai, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).1
_______

Before Quinn, Taylor, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Dana Limited (“applicant”) filed an application to register
the mark shown below for “axles for vehicles” in International
Class 122:

1 The Examining Attorney who appeared at the oral hearing was Matthew
McDowell.
2 Serial No. 85447797, filed October 14, 2011, pursuant to Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b), claiming acquired
distinctiveness in whole based on prior Registration Nos. 0856983,
1682538, and 3000840. See TMEP § 1212.04 (2013).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85447797
2

The description of the mark reads: The mark consists of a
diamond design with the word “DANA” within the diamond, “DANA”
shown in solid lines, and “44” shown on the lower right corner
of the diamond, “44” shown in brokes [sic] lines represents that
any number with at least two digits may be used.
The Trademark Examining Attorney refused registration of
applicant’s mark under Sections 1 and 45 of the Trademark Act of
1946, 15 U.S.C. §§ 1051 and 1127, on the ground that applicant
seeks to register more than one mark with its application. When
registration was finally refused, applicant filed this appeal.
Both applicant and the examining attorney filed briefs, and
applicant filed a reply brief. At applicant’s request, a
hearing was held and presided over by this panel, on January 9,
2014. For the reasons discussed herein, upon careful
consideration of the evidence and arguments presented, we affirm
the refusal to register.
Refusal for Multiple Marks
An application must be limited to only one mark. 15 U.S.C.
§§ 1051 and 1127; Trademark Rule 2.52. A mark that contains a
Serial No. 85447797
3
changeable or “phantom” element is considered to be more than
one mark. See In re Int’l Flavors & Fragrances Inc., 183 F.3d
1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Primo Water Corp.,
87 USPQ2d 1376 (TTAB 2008). It is the examining attorney’s
position that an element of applicant’s mark is a changeable or
phantom element, specifically, the changing number described as
“any number with at least two digits.” Therefore, according to
the examining attorney, this makes an accurate search for
conflicting marks impossible, and gives insufficient notice of
applicant’s mark on the register, since it does not accurately
reflect use in commerce.
Applicant does not dispute that its mark contains a phantom
element. (appl’s brief at 2). However, applicant asserts that
it is not barred from registration for three reasons: 1)
applicant’s mark is the “legal equivalent” of its prior
registered marks; 2) applicant’s mark is limited, and such marks
have been allowed by case law; and 3) prior Office practice
indicates that it should be allowed. We consider each of these
arguments.
Applicant has applied for registration of its mark with a
claim of acquired distinctiveness “in whole” based on the
following three prior registered marks:
Serial No. 85447797
4
3 for, inter alia, “drive axle
units,” in International Class 12;
4 for, inter alia, “one and two speed
axles,” in International Class 12; and
5 for “engine bearings” in
International Class 8 (Cancelled).
Our primary reviewing court considered the issue of legal
equivalents for phantom marks in In re Dial-A-Mattress Operating

3 Registration No. 0856983, Registered September 17, 1968. Sections 8
and 15 acknowledged and accepted. Renewed twice.
4 Registration No. 1682538, Registered April 14, 1992. Sections 8 and
15 acknowledged and accepted. Renewed.
5 Registration No. 3000840, Registered September 27, 2005. Cancelled
for failure to file Section 8 affidavit of use, October 5, 2012. An
expired or cancelled registration is not evidence of anything except
that the registration issued. See TBMP § 1208.02 (2013); In re Hartz
Hotel Services Inc., 102 USPQ2d 1150, 1152 n.5 (TTAB 2012) (Board did
not consider four cancelled third-party registrations submitted by
applicant).
Serial No. 85447797
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Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
There, the Court noted:
A proposed mark is the “same mark” as previously-
registered marks for the purpose of Trademark Rule
2.41(b) if it is the “legal equivalent” of such marks.
A mark is the legal equivalent of another if it
creates the same, continuing commercial impression
such that the consumer would consider them both the
same mark. Whether marks are legal equivalents is a
question of law subject to our de novo review. No
evidence need be entertained other than the visual or
aural appearance of the marks themselves. Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159,
17 USPQ2d 1866, 1868 (Fed. Cir. 1991).

Upon analysis of applicant’s prior existing registrations, we do
not find any of them to be legal equivalents within this
meaning. The marks are simply not the same where applicant
seeks to add the additional matter of a changeable element that
may include an essentially unlimited number of digits, any
combination of which may change the commercial impression of
applicant’s mark.
Applicant, while seeming to agree that an unlimited number
of changeable digits may render its mark unregistrable, argues
that it actually seeks a limited number of two-digit
combinations “only.” (appl’s brief at ftnt 1 “Dana intends to
always use a two-digit number”). This is clearly not supported
by applicant’s description of its mark however, which states
that “at least two digits may be used.” Thus applicant’s
reliance on the In re Dial-A-Mattress for the proposition that
Serial No. 85447797
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phantom marks with limited possibilities may be registered is
simply misplaced. The phantom mark in that case was an area
code, of which, the Court noted, there are limited possible
combinations. This is not so with the essentially unlimited
combinations of applicant’s mark which, as described, may be any
two, three, four, or more digits. Accordingly, we do not find
the phantom element in applicant’s mark to be limited, nor do we
find the situation in In re Dial-A-Mattress to be analogous.
Rather, we agree with the examining attorney’s assessment that
applicant’s proposed phantom mark makes an accurate search for
conflicting marks impossible, and gives insufficient notice of
applicant’s mark on the register.
Finally, applicant argues that prior Office practice
dictates that its mark should be registered. In particular,
applicant points to third-party registrations of the marks
NDA[],6 WEBSTRATEGIES---,7 ___COWLENDER,8 and SPL123X.9 The
examining attorney points out that the first two have been
cancelled. Although the final mark is owned by applicant, and
includes a phantom element for “part or model number consisting
of two or three digits which vary depending on use of the mark,”
it is axiomatic that every case must be decided on its own

6 Registration No. 2277043, Registered September 14, 1999. Cancelled.
7 Registration No. 2298605, Registered December 7, 1999. Cancelled.
8 Registration No. 2221084, Registered February 2, 1999. Sections 8
and 15 acknowledged and accepted. Renewed.
Serial No. 85447797
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merits. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001).10
In conclusion, we find that applicant seeks to register
multiple marks in violation of Sections 1 and 45 of the
Trademark Act. Therefore, applicant’s applied-for mark is
unregistrable.

Decision: The refusal to register is affirmed.

9 Registration No. 1802662, Registered November 2, 1993. Sections 8
and 15 acknowledged and accepted. Renewed.
10 We also note, in this regard, that none of these registrations
issued within the past ten years, and applicant’s in particular,
predates the relevant caselaw.