1202.17(e) Universal Symbols Commonly Appearing in Marks
The universal symbols discussed below frequently appear in applied-for marks. Some of these symbols are so widely used and well known that they will have only non-trademark significance when used with almost any good or service in any context or field. Others will fail to function as source indicators only when used with particular goods or services. Nonetheless, all of these symbols could function as source indicators if they are displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. See TMEP §1202.17(b)(ii). Like any design element, all of these symbols may be used in an ornamental manner on goods and, if so, should be refused accordingly. Finally, depending on the particular facts and available evidence, other grounds for refusal may apply to marks containing these symbols (e.g., Section 2(e)(1), Section 2(d), Section 2(a)).
1202.17(e)(i) Awareness Ribbon Symbols
The awareness ribbon symbol is a representation of a ribbon intended to signify and promote awareness of a particular cause. The specific cause represented depends on the color or color scheme displayed. See, e.g., Support Store, Cause Awareness By Color, http://www.bumperstickermagnet.com/cause-awareness-by-color.html (accessed Aug. 24, 2012). For example, the pink awareness ribbon is commonly associated with awareness of breast cancer and related causes. See id. Yellow ribbons are frequently used to indicate support of the armed forces. See id. And red ribbons are typically associated with awareness of HIV/AIDS or heart disease. See id.
Due to the widespread use of the awareness ribbon in various colors to indicate support for, or raise awareness of, a cause, the awareness ribbon shape by itself will not function as a source indicator. However, the examining attorney must evaluate an awareness ribbon symbol in a mark as a whole, including the color, color scheme, pattern, or other matter inside of the ribbon, to determine whether it functions as a source indicator.
Some awareness ribbons have become so widely used and well known that they are unlikely to function as a mark when used in connection with almost any goods or services. These include ribbons in pink, yellow, red, and possibly others. The pink awareness ribbon, for example, has become the universal symbol of breast cancer awareness. This symbol appears in connection with the charity activities of numerous organizations and is used on a wide variety of products, including clothing, jewelry, sports equipment, and household items. Often, when it is used, it has informational or ornamental characteristics, or both. Thus, it is more likely that consumers, upon encountering the pink ribbon symbol on a product, would view it as informational or decorative regardless of the particular context or use. For instance, evidence may support the conclusion that, when a pink ribbon is displayed on the packaging for a household appliance, the ribbon would likely be viewed as indicating that the product has some connection to a breast cancer-related cause (e.g., some portion of the proceeds from the sale of the appliance would go towards breast cancer research). Or evidence may establish that the pink ribbon symbol displayed on a shirt would be viewed as conveying the message that the wearer is a supporter of breast cancer survivors or breast cancer causes in general. Even when an awareness ribbon symbol features a particular color, color scheme, or pattern that is not commonly used or widely recognized, the examining attorney should evaluate whether the symbol is inherently distinctive.
The actions an examining attorney will take when examining a mark featuring an awareness ribbon symbol depend on which of the following categories the awareness ribbon symbol falls under:
Category 1: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive and the evidence shows that the symbol’s use by various parties in that color, color scheme, or pattern is so widespread, and its meaning so widely understood, that it will likely be perceived as only providing information or conveying an informational message when used in connection with the goods or services.
This type of awareness ribbon symbol fails to function as a mark and the examining attorney must refuse registration if the symbol forms the entire mark or appears with only other non-source-indicating matter, or disclaim the symbol if it appears with registrable matter.
Awareness ribbon symbols in this category are incapable of functioning as a mark. Thus, if the mark consists entirely of this type of symbol, claiming acquired distinctiveness under §2(f) or amending the application to seek registration on the Supplemental Register will not overcome the refusal. Likewise, a claim of acquired distinctiveness in part will not obviate a disclaimer requirement.
Awareness ribbon symbols that do not contain inherently distinctive matter inside the ribbon, and are displayed in black and white, or gray scale, because they appear in non-color mark drawings, are incapable of functioning as a mark and would be subject to the same procedures set forth above.
Examples:
Pink ribbon
Yellow Ribbon
Black-and-White or Gray Scale Ribbon
Category 2: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive, but there is no evidence that the awareness ribbon symbol shown in the mark is widely used by various parties or that its meaning is widely understood.
In these cases, the symbol is not inherently distinctive and fails to function as a mark because, given the widespread use of awareness ribbons in various colors and patterns generally, the symbol will not be perceived as a source indicator. Thus, the examining attorney must refuse registration if the symbol forms the entire mark (or appears with other non-source-indicating matter), or require a disclaimer of the symbol if the symbol appears with registrable matter. However, the applicant may overcome the refusal by showing acquired distinctiveness based on actual evidence establishing recognition of the proposed mark as a source indicator, or by amending the application to seek registration on the Supplemental Register. For awareness ribbon symbols in this category, evidence of five years’ use usually will not be sufficient to show that the mark has acquired distinctiveness. See TMEP §§1212.06–1212.06(e)(iv) for information on establishing acquired distinctiveness by actual evidence. A disclaimer requirement may be obviated by claiming acquired distinctiveness in part as to the symbol based on actual evidence.
Examples:
for "promoting public awareness of domestic violence, sexual assault and child abuse"
for "surgery; and medical services, namely, treatment of breast disease"
Category 3: The matter inside the awareness ribbon shape in the mark is inherently distinctive or otherwise registrable (e.g., non-descriptive/non-informational wording, registrable design elements) and there is no evidence that the awareness ribbon shown in the mark is widely used by various parties or that its meaning is widely understood.
No refusal (or disclaimer) is necessary, as long as the awareness ribbon is not used ornamentally on the specimen, because the ribbon shape and the matter within it create a registrable unitary whole.
Examples:
for "charitable fund raising, namely, raising funds for breast cancer research and treatment"
for "educational services, namely, conducting conferences, workshops, seminars, classes, and meetings in the field of autism and advocacy on behalf of autistic children and adults"
1202.17(e)(ii) Recycling Symbol
The recycling symbol typically appears on materials to indicate that they are recyclable or made from recycled matter. See, e.g., About.com, Recycling Symbols Made Easy, http://greenliving.about.com/od/recyclingwaste/tp/recycling_symbols.htm (accessed Aug. 24, 2012). However, the symbol is also used in connection with a wide assortment of goods and services in a variety of fields to indicate that the goods or services involve recycling or are otherwise environmentally friendly. See id.
Because of the widespread use of the symbol and the resulting general recognition of the symbol’s significance, the symbol is not likely to function as a source indicator. Instead, the evidence will show consumers are likely to view it as merely providing information about the goods or services, in which case a failure-to-function refusal is appropriate. Even when the symbol is displayed on clothing and fashion accessories in a manner that would normally be considered trademark use, evidence will likely show the mark will be perceived as conveying an informational message (e.g., that the wearer supports recycling or environmental awareness). See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1230 (TTAB 2010) (holding that consumers would not view the "old and familiar" slogan ONCE A MARINE, ALWAYS A MARINE as a trademark indicating the source of the applicant’s clothing because they would be accustomed to seeing it displayed on clothing from many different sources, and noting that "[i]t is clear that clothing imprinted with this slogan would be purchased by consumers for the message it conveys"). The symbol will usually also have descriptive significance as applied to the relevant goods or services.
1202.17(e)(iii) Caduceus, Rod of Asclepius, and Prescription Symbol
The caduceus and the Rod of Asclepius are commonly used to indicate that goods or services are medical in nature or otherwise relate to the medical profession. See Webster’s New World College Dictionary 195 (3rd ed. 1997) (defining "caduceus" as "the staff of an ancient herald; esp., the winged staff with two serpents coiled about it . . . an emblematic staff like this with either one or two serpents, used as a symbol of the medical profession"); THEFREEDICTIONARY.COM, search of "Rod of Asclepius," http://medical-dictionary.thefreedictionary.com/Rod+of+Asclepius (Aug. 24, 2012) (citing Segen’s Medical Dictionary) (defining "Rod of Asclepius" as "[t]he ‘correct’ symbol of medicine, which is a knarled [sic] wooden staff with a single encircling snake"). The prescription symbol is frequently used in connection with prescription drugs or medicated goods, or with services relating to these items. See Webster’s New World College Dictionary 1178 (3rd ed. 1997) (defining "Rx" as "symbol for PRESCRIPTION"). For any marks containing these symbols, the examining attorney should review the specimen, the relevant evidence, and the goods/services to determine if the mark functions as a source indicator or instead is merely informational. In those instances that the mark fails to function, there is likely also a valid basis for finding the symbol descriptive.
1202.17(e)(iv) Religious Symbols
Religious symbols, such as the Latin cross and the Star of David, may be informational or have descriptive significance when used on a variety of goods and services. For example, evidence may support the conclusion that, as used in connection with media such as books or videos, the Star of David is likely to be perceived as providing information about or describing the media’s content. Or evidence may show that a Latin cross used in an advertisement for services is likely to be viewed as conveying an informational message (i.e., indicating an affiliation with Christianity). Note that a mark containing a Greek cross (i.e., an upright equilateral cross) may be subject to other refusals. See TMEP §1205.01.
1202.17(e)(v) Currency Symbols
When used with financial services, such as currency exchange or banking, evidence will show currency symbols, such as the dollar sign or the euro symbol, will likely be informational and merely descriptive. However, when used in connection with other types of goods or services, the evidence may show these symbols to be arbitrary or suggestive and otherwise function as a mark.
1202.17(e)(vi) Universal Prohibition Symbol
The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of "no," "not," or "prohibited." See, e.g., Free Signage.com, Prohibition Signs, http://www.freesignage.com/prohibited_signs.php (accessed Aug. 24, 2012). When the prohibition symbol is superimposed over other matter, the design as a whole is unitary; thus, no disclaimer of the prohibition symbol apart from the other matter is necessary. However, the examining attorney must consider whether evidence supports the conclusion that the design as a whole (i.e., the symbol and the image it is superimposed over) fails to function as a mark or is merely descriptive (or both) and thus must be refused or disclaimed.