1205.01(d) Examination Procedures for Marks Containing the Swiss Confederation Coat of Arms or Flag
The Trademark Act bars registration of trademarks or service marks containing the coat of arms or flag of the Swiss Confederation, commonly known as Switzerland. See 15 U.S.C. §§1052(a), 1052(b), 1052(e)(2), 1052(e)(3), 1127; Britannica.com, Switzerland, http://www.britannica.com/EBchecked/topic/577225/Switzerland (accessed Aug. 15, 2012); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/ (accessed Feb. 24, 2022).
The Swiss coat of arms consists of a white equilateral cross displayed upright on a red triangular shield and the Swiss flag consists of a white equilateral cross displayed upright on a red square. See Swiss Fed. Act of 21 June 2013 on the Protection of the Swiss Coat of Arms and Other Public Signs (Coat of Arms Protection, CAPA) https://www.fedlex.admin.ch/eli/cc/2015/613/en (accessed April 19, 2022) (indicating that "[t]he Swiss cross is a white, upright, free-standing cross depicted against a red background, whose arms, which are all of equal size, are one-sixth longer than they are wide" and that "[t]he Coat of Arms of the Swiss Confederation (the Swiss coat of arms) is a Swiss cross in a triangular shield"); Britannica.com, flag of Switzerland, https://www.britannica.com/topic/flag-of-Switzerland (accessed April 19, 2022); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/flag (accessed April 19, 2022).
Swiss Coat of Arms
Swiss Flag
The primary refusals that apply to marks containing the Swiss coat of arms, the Swiss flag, or simulations thereof, are the following:
- A refusal under Trademark Act §§1 and 45, because the mark is not in lawful use in commerce, based on the prohibition, under 18 U.S.C. §708, of the commercial use of the Swiss coat of arms. 15 U.S.C. §§1051, 1127; see also TMEP §1205.01.
- A refusal under §2(b), because the mark consists of or comprises the flag or coat of arms of a foreign country, namely, Switzerland. 15 U.S.C. §1052(b); see also TMEP §§ 1204–1204.01(e), 1204.04.
1205.01(d)(i) Refusal Under Sections 1 and 45: Swiss Coat of Arms Not in Lawful Use
Federal law prohibits anyone from using the Swiss Confederation coat of arms as a trademark or for any other commercial purpose. Specifically, the text of 18 U.S.C. §708 reads as follows:
Whoever, whether a corporation, partnership, unincorporated company, association, or person within the United States, willfully uses as a trade mark, commercial label, or portion thereof, or as an advertisement or insignia for any business or organization or for any trade or commercial purpose, the coat of arms of the Swiss Confederation, consisting of an upright white cross with equal arms and lines on a red ground, or any simulation thereof, shall be fined under this title or imprisoned not more than six months, or both. This section shall not make unlawful the use of any such design or insignia which was lawful on August 31, 1948.
The statute describes the coat of arms as "an upright white cross with equal arms and lines on a red ground." 18 U.S.C. §708. Although the Swiss flag features this same type of white cross, the statute refers to the "coat of arms" and therefore is applied only to the Swiss coat of arms, which consists of a white equilateral cross displayed upright on a red triangular shield.
The text of 18 U.S.C. §708 does not specify any authorized users of the Swiss coat of arms. Accordingly, no one may lawfully use the coat of arms as a trademark or service mark in the United States, unless the mark was in use on or before August 31, 1948. See 18 U.S.C. §708. Thus, regardless of the identity of the applicant, any mark containing the Swiss coat of arms, or a simulation thereof, which was not in use on or before that date, must be refused under §§1 and 45 because the mark is not in lawful use in commerce.
Although applications based on §1(b), §44, or §66(a) need not initially show actual use of the mark in commerce, applicants filing under these bases must have a bona fide intent to use the mark in commerce. See TMEP §§1008, 1009, 1101, 1102, 1904.01(c), 1904.01(d). Because "use in commerce" under the Trademark Act means "lawful use in commerce," any intended use of the mark serving as the basis for these types of applications must also be lawful. See John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010) ; In re Midwest Tennis & Track Co., 29 USPQ2d at 1386 n.2 (TTAB 1993) ; Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982) ; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007) ("It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful. . . . [W]e also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.") (citations omitted). With respect to a mark containing the Swiss coat of arms, actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce. John W. Carson Found., 94 USPQ2d at 1948. Therefore, it is appropriate to issue a refusal under §§1 and 45 for applications based on §1(b), §44, or §66(a) if the facts and available evidence support the conclusion that the mark contains the Swiss coat of arms or a simulation thereof.
To properly support a refusal under §§1 and 45, based on a finding that the mark is not, or cannot be, in lawful use in commerce, there must be some indication that the mark features the Swiss coat of arms or a simulation thereof. A "simulation" refers to "something that gives the appearance or effect or has the characteristics of an original item." In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973) (citing Webster’s Third New Int’l Dictionary (unabridged ed. 1965)); see TMEP §1204. Whether particular matter is a simulation of the Swiss coat of arms is determined by a visual comparison of the matter and the coat of arms. Id.
The application record usually contains sufficient information to establish that the mark contains the Swiss coat of arms or a simulation thereof. For example, the drawing may show a white cross on a red triangular shield. Or, if the drawing is not in color, the specimen, color claim, or color description may indicate that these elements appear in the prohibited color scheme.
Even if the application record itself does not provide evidence of unlawful use, it may be appropriate in some instances to base a refusal under §§1 and 45 on extrinsic evidence of applicant’s use of the mark. Examining attorneys are not required to search for extrinsic evidence. However, if the examining attorney locates relevant extrinsic evidence in the course of examining the mark, that evidence may be used to support the refusal.
1205.01(d)(i)(A) When a Refusal Under Sections 1 and 45 Must Be Issued
The examining attorney must issue a "not in lawful use" refusal under §§1 and 45 if a mark contains an element composed of an upright equilateral cross on a triangular shield (or a simulation thereof) that is not significantly altered, stylized, or merged with other elements in the mark; the dates of use are after August 31, 1948 (or are not provided); and any of the following conditions exist:
- the drawing shows the cross in white and the triangular shield in red;
- the drawing is not in color, but (i) the color claim or mark description indicates the cross is white and the shield is red or (ii) the specimen shows the cross in white and shield in red; or
- the drawing is not in color, there is no color claim, the mark description does not reference color (or there is no mark description), and there is no specimen of record (because one has not been submitted or is not required), but the examining attorney has found extrinsic evidence indicating that the applicant actually uses the mark in the white cross/red shield color scheme.
If the dates of use provided do not clearly indicate that the mark was in use on or before August 31, 1948, it should be presumed that the first use occurred after that date. In applications based on §1(b), §66(a), or solely on §44, the use dates should be presumed to be after August 31, 1948. These procedures apply regardless of the application filing basis.
The basis for concluding that a mark containing the Swiss coat of arms is not in lawful use is 18 U.S.C. §708, but the basis for refusing registration of the mark is Trademark Act §§1 and 45. Thus, when refusing registration on the ground that the mark is not in lawful use in commerce, the examining attorney must cite §§1 and 45, 15 U.S.C. §§1051, 1127, in support of the refusal and explain that the finding of unlawful use is based on 18 U.S.C. §708. See TMEP §1205.01. When issuing the refusal, the examining attorney should provide evidence showing the typical depiction of the Swiss coat of arms. See TMEP §1205.01(c).
For applications based on §1(a), the examining attorney must issue a requirement for additional information under Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), if a mark contains an element composed of an upright equilateral cross on a triangular shield (or a simulation thereof), the dates of use are after August 31, 1948 (or are not provided), and all of the following conditions exist:
- the drawing is not in color;
- there is no color claim;
- the mark description does not reference color (or there is no mark description);
- the specimen of record shows the mark but is not in color (i.e., the specimen is a black-and-white or gray scale reproduction of a color specimen); and
- the examining attorney has found no extrinsic evidence indicating applicant actually uses the mark in the white cross/red shield color scheme.
The requirement for additional information should advise the applicant that the use of the Swiss coat of arms in the white and red color scheme is prohibited under 18 U.S.C. §708, and require the applicant to provide either a color version of the specimen of record or a statement that the cross-and-shield element in the mark, as used in the specimen of record, does not appear in the colors white and red. If, in response, the applicant submits a color version of the specimen and it shows that the cross-and-shield is displayed in colors other than white and red, no refusal under §§1 and 45 should issue. The statement that the cross-and-shield element, as used in the specimen of record, is not displayed in the prohibited color scheme may be submitted in a response to an Office action or entered by examiner’s amendment. If the applicant submits this statement, no further inquiry is necessary. Although the statement will appear in the application record, it will not be printed on the registration certificate, should one issue.
1205.01(d)(i)(B) When an Advisory Should Be Provided
If issuing an Office action for other reasons, the examining attorney should provide an advisory regarding the potential refusal under §§1 and 45 when all of the following conditions exist:
- the dates of use are after August 31, 1948 (or are not provided);
- the mark contains an upright equilateral cross on a triangular shield that is not significantly altered, stylized, or merged with other elements in the mark;
- the drawing is not in color;
- the application record does not contain a specimen or any indication of the colors that appear in the mark as it is actually used; and
- the examining attorney has found no extrinsic evidence that the applicant uses the cross-and-shield element in the prohibited color scheme (the examining attorney is not required to search for such extrinsic evidence).
If the dates of use provided do not clearly indicate that the mark was in use on or before August 31, 1948, it should be presumed that the first use occurred after that date. In applications based on §1(b), §66(a), or solely on §44, the use dates should be presumed to be after August 31, 1948.
If possible, the examining attorney should provide the advisory in the initial Office action. The advisory should indicate that a refusal under Trademark Act §§1 and 45 will issue if the specimen submitted with an allegation of use (for §1(b) applications) or a §8 or §71 affidavit or declaration of use (for §44 and §66(a) applications) shows the cross-and-shield element in a white and red color scheme. In addition, the applicant should be advised that a color version of the specimen showing a red cross on a white ground may result in a refusal on the ground that the mark is not in lawful use in commerce based on 18 U.S.C. §706 (see TMEP §§ 1205.01(c)–(c)(iv) regarding marks containing the Greek red cross and TMEP §1205.01(d)(iii). Failure to provide an advisory does not preclude a refusal of registration in a subsequent Office action or a refusal of a §8 or §71 affidavit or declaration of use. Cf. TMEP §1202.
1205.01(d)(i)(C) When a Refusal Under Sections 1 and 45 Should Not Be Issued
Even if the mark contains an element composed of an upright equilateral cross on a triangular shield, the examining attorney should not issue a refusal under §§1 and 45 if any of the following conditions exist:
- the applicant specifies that the mark was in use on or before August 31, 1948;
- the coat of arms shown in the mark is significantly altered, stylized, or merged with other elements in the mark, so as to create a different commercial impression from the actual Swiss coat of arms;
- the drawing is not in color, there is no color claim, the mark description has been omitted or does not reference color, and the application contains a color specimen that shows the relevant matter in a color scheme other than white and red; or
- the drawing is in color and shows the cross and triangular shield in a color scheme other than white and red. In this situation, a refusal should not issue, even if the color claim, mark description, or specimen indicates that the cross and shield appear in the prohibited color scheme. Instead, to address the discrepancy between the drawing and the other information in the application record, the examining attorney must require a corrected color claim, an amended mark description, and/or a matching specimen, as appropriate. In addition, the examining attorney should provide an advisory indicating that the use of the Swiss coat of arms in the white and red color scheme is prohibited by federal law and that, if the applicant amends the drawing to show the cross in white and the shield in red, the mark will be refused under Trademark Act §§1 and 45.
The refusal should not be issued even if the cross is white and the shield is red.
1205.01(d)(i)(D) Applicant’s Response to Refusal
If a mark is unregistrable under §§1 and 45 because it contains the Swiss coat of arms, disclaiming the coat of arms will not make it registrable, nor will claiming acquired distinctiveness under Trademark Act §2(f) or amending the application to the Supplemental Register. Cf. TMEP §§1204.04(a) and 1205.01(a)(v). In addition, an applicant may not overcome the refusal under §§1 and 45 by disclaiming the colors that appear in the coat of arms. If registration is refused because the drawing or specimen actually shows the cross-and-shield element in white and red, the applicant may not overcome the refusal by merely providing a statement that the mark will not be used in the prohibited colors. (If the drawing contains a black-and-white depiction of the Swiss coat of arms, and the applicant provides a statement that the mark does not, or will not, appear in the colors white and red, the statement will remain in the application record but will not be printed on any registration certificate that may issue.)
For applications based on §1, applicants may overcome the refusal as follows:
- Amending the Colors in the Drawing. If the mark is refused because the drawing shows the cross-and-shield element in the prohibited color scheme, a §1 applicant may overcome the refusal by submitting an amended drawing showing the cross-and-shield element in a different, non-prohibited color scheme, or by submitting a non-color version of the drawing (i.e., a black-and-white or gray scale drawing). Under these circumstances, these amendments to the drawing usually will not be considered a material alteration of the mark. Cf. TMEP §1205.01(a)(v). The color claim and color description must also be amended or deleted, as appropriate. If the application is based on §1(a), the record must contain an acceptable matching specimen. Black-and-white or gray scale reproductions of specimens are not acceptable for this purpose; a color version of the specimen must be submitted.
- Amending the Color Claim/Description; Substitute Specimen. If the drawing is not in color, but registration is refused because the color claim or mark description indicates that the cross-and-shield element appears in white and red, a §1 applicant may overcome the refusal by amending the color claim or mark description to delete any reference to color. Likewise, if the original drawing is not in color, but registration was refused because the specimen showed the cross-and-shield element in the prohibited color scheme, the applicant may obviate the refusal by submitting a color specimen showing use of the mark in colors other than white and red.
- Deleting the Coat of Arms from the Drawing. A §1 applicant may also overcome the refusal by deleting the coat of arms from the mark if the coat of arms is separable from the other elements in the mark and the remaining matter is registrable. Cf. TMEP §1204.04(b). Generally, the deletion of this matter will not be considered a material alteration of the mark. Furthermore, if the coat of arms is deleted from the drawing, any specimen showing the mark with the deleted matter should still be considered to match the drawing. Cf. TMEP §1204.04(b).
For applications based on §44 or §66(a), applicants generally may not make amendments to the mark. Therefore, the option to delete the Swiss coat of arms is not available in these types of applications. 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§807.12(b), 1011.01, 1904.02(j). However, if the mark in a §44 or §66(a) application is refused because the drawing presents the cross-and-shield element in the prohibited color scheme, but there is no corresponding color claim in the foreign or international registration, the applicant may overcome the refusal under §§1 and 45 by submitting a statement that no claim of color is made with respect to the foreign or international registration and amending the drawing to a black-and-white reproduction of the mark. See TMEP §§1011.01, 1904.02(k). In addition, the applicant must submit a statement confirming applicant’s bona fide intent to use the mark lawfully (i.e., in colors other than white and red). This statement does not need to be verified.
1205.01(d)(i)(E) Refusals Based on Extrinsic Evidence
If a §1(b), §44, or §66(a) application is refused based solely on extrinsic evidence of applicant’s unlawful use of the Swiss coat of arms, the applicant may overcome the refusal by submitting a verified statement that the applicant has a bona fide intention to use the mark lawfully (i.e., in colors other than white and red). TMEP §§804–804.01(b). For a §1(a) application refused based on extrinsic evidence (or based on the specimen of record), the applicant may overcome the refusal by amending the application filing basis to §1(b), and need only submit the usual verified statement corresponding to that amendment (i.e., that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services, and that the applicant had this intention as of the application filing date). 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §806.03(c). If the specimen submitted with the applicant’s subsequent allegation of use, or with an affidavit or declaration of use under §8 or §71, shows the mark is not in lawful use, the refusal must be reissued.
1205.01(d)(ii) Refusal Under §2(b): Swiss Flag or Swiss Coat of Arms
Trademark Act §2(b) prohibits registration on the Principal Register or Supplemental Register of a mark that consists of or comprises the flag or coat of arms of a foreign nation. 15 U.S.C. §1052(b); see TMEP §§1204-1204.05. In determining whether a mark must be refused under §2(b), the relevant question is whether consumers will perceive matter in the mark as a flag or coat of arms. See In re Family Emergency Room LLC, 121 USPQ2d 1886, 1888 (TTAB 2017); TMEP §1204.01(a).
Section 2(b) also prohibits registration of any simulation of a foreign nation’s flag or coat of arms. 15 U.S.C. §1052(b); see In re Family Emergency Room LLC, 121 USPQ2d at 1887; TMEP §1204.01(a). As previously noted, a "simulation" refers to "something that gives the appearance or effect or has the characteristics of an original item." In re Advance Indus. Sec., Inc., 194 USPQ 344, 346 (TTAB 1977); see TMEP §1204.
Whether particular matter is a simulation of a flag or coat of arms is determined by a visual comparison of the matter and the actual flag or coat or arms. See In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973); TMEP §1204. The focus of the analysis is on the relevant purchasers’ general recollection of the flag or coat of arms, "without a careful analysis and side-by-side comparison." In re Advance Indus. Sec., Inc., 194 USPQ at 346 . See TMEP §1204.01(a) for examples of flag simulations.
The examining attorney should consider the following factors when determining whether matter in a mark will be perceived as the Swiss coat of arms or Swiss flag:
- the colors, if any, that appear in the matter;
- the stylization of the matter and its relationship to other elements in the mark;
- the presence of any words or other designs on the drawing that might create or reinforce the impression that the matter is the Swiss flag or Swiss coat of arms; and
- the presentation and use of the mark on the specimen of record, if one is provided. See In re Family Emergency Room LLC, 121 USPQ2d at 1888; TMEP §1204.01(a).
The determination of whether a refusal under §2(b) must issue should be based on how the mark is displayed in the drawing, described in the application, or used in the specimen of record. See In re Family Emergency Room LLC, 121 USPQ2d at 1888. Extrinsic evidence of applicant’s use of the mark should not be considered.
1205.01(d)(ii)(A) When a Refusal Under §2(b) Must Be Issued
The examining attorney must refuse registration under §2(b) if the mark contains an element composed of an upright equilateral cross on a square, a rectangle, or a triangular shield (or a simulation thereof) that is not significantly stylized, altered, or merged with other elements in the mark, and any of the following conditions exist:
- the drawing shows the cross in white and the square, rectangle, or triangular shield in red;
- the drawing is not in color, but (i) the color claim or mark description indicates the cross is white and the square, rectangle, or triangular shield is red, or (ii) the specimen shows the cross and square, rectangle, or triangular shield in the prohibited color scheme; or
- the drawing is not in color, but in addition to an upright equilateral cross on a square, a rectangle, or a triangular shield, the mark contains wording or other matter that creates or reinforces the impression that the cross and square/rectangle/shield design is the Swiss flag or Swiss coat of arms (e.g., "Switzerland," "Swiss," "Suisse," "Schweiz," "Swiss Confederation").
For applications based on §1(a), the examining attorney must issue a requirement for additional information based on Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), if a mark contains an element composed of an upright equilateral cross on a square, a rectangle, or a triangular shield (or a simulation thereof) and all of the following conditions exist:
- the drawing is not in color;
- there is no color claim;
- the mark description is omitted or does not reference color;
- the mark does not contain wording or other matter that creates or reinforces the impression that the matter is the Swiss flag or Swiss coat of arms (e.g., "Switzerland," "Swiss," "Suisse," "Schweiz," "Swiss Confederation"); and
- the specimen of record shows the mark but is not in color (i.e., the specimen is a black-and-white or gray scale reproduction of a color specimen).
The requirement for additional information should advise that registration of the Swiss coat of arms or Swiss flag in the white-and-red color scheme is barred under Trademark Act §2(b) and require the applicant to provide either a color version of the specimen of record or a statement that the relevant matter in the mark, as used in the specimen of record, does not appear in the colors white and red. If, in response, the applicant submits a color version of the specimen and it shows that the relevant matter is displayed in colors other than white and red, a refusal under §2(b) should not be issued. The statement that the relevant matter, as used in the specimen of record, does not appear in the prohibited color scheme may be submitted in a response to an Office action or may be entered by examiner’s amendment. If the applicant submits this statement, no further inquiry is necessary. Although the statement will appear in the application record, it will not be printed on the registration certificate, should one issue.
When issuing the §2(b) refusal, the examining attorney must provide evidence supporting the conclusion that the matter in the mark is the official coat of arms or flag of the Swiss Confederation. See Swiss Fed. Act of 21 June 2013 on the Protection of the Swiss Coat of Arms and Other Public Signs (Coat of Arms Protection, CAPA) https://www.fedlex.admin.ch/eli/cc/2015/613/en (accessed April 19, 2022) (indicating that "[t]he Swiss cross is a white, upright, free-standing cross depicted against a red background, whose arms, which are all of equal size, are one-sixth longer than they are wide" and that "[t]he Coat of Arms of the Swiss Confederation (the Swiss coat of arms) is a Swiss cross in a triangular shield"); Britannica.com, flag of Switzerland, https://www.britannica.com/topic/flag-of-Switzerland (accessed April 19, 2022); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/flag (accessed April 19, 2022). In addition, if the refusal is based on the examining attorney’s conclusion that other wording or matter in the mark creates or reinforces the impression that the cross and square/rectangle/shield design is the Swiss flag or Swiss coat of arms, the examining attorney should provide evidence to support that conclusion.
When an examining attorney issues a §2(b) refusal because the mark features a cross-and-shield design that appears in, or is used in, the prohibited color scheme, the examining attorney must also issue a "not in lawful use" refusal under Trademark Act §§1 and 45. See TMEP §1205.01(c)(i). Sometimes, however, a §2(b) refusal will be issued not because information in the application indicates that the cross-and-shield design appears in, or is used in, the prohibited color scheme, but because other Swiss indicia in the mark would lead to the impression that a non-color cross-and-shield design is the Swiss coat of arms. In these instances, a refusal under §§1 and 45 is not appropriate unless there is extrinsic evidence that, as used by the applicant, the coat of arms in the mark appears in the prohibited color scheme.
1205.01(d)(ii)(B) When an Advisory Should Be Provided
If sending an Office action for other reasons, the examining attorney should provide an advisory regarding the potential refusal under §2(b) when all of the following conditions exist:
- the mark contains an upright equilateral cross on a square, a rectangle, or a triangular shield that is not significantly stylized, altered, or merged with other elements in the mark;
- the drawing is not in color;
- the application record does not contain a specimen or any other indication of the colors that appear in the mark as it is actually used; and
- there is no wording or other indicia in the mark that would create or reinforce the impression that the mark contains the Swiss flag or the Swiss coat of arms.
If possible, the examining attorney should provide the advisory in the initial Office action. The advisory should indicate that a refusal under Trademark Act §2(b) will issue if the specimen submitted with an allegation of use (for §1(b) applications) or a §8 or §71 affidavit or declaration of use (for §44 and §66(a) applications) shows the cross and square/rectangle/shield in a white and red color scheme. Failure to provide an advisory does not preclude a refusal of registration in a subsequent Office action or a refusal of a §8 or §71 affidavit or declaration. Cf. TMEP §1202.
1205.01(d)(ii)(C) When a Refusal Under §2(b) Should Not Be Issued
Even if the mark contains an upright equilateral cross on a square, a rectangle, or a triangular shield (or simulation thereof), a §2(b) refusal should not be issued if any of the following conditions exist:
- the flag or coat of arms shown in the mark is sufficiently altered, stylized, or merged with other elements in the mark, so as to create a distinct commercial impression;
- the drawing is not in color, there is no color claim, the mark description does not reference color (or there is no mark description), and the application contains a color specimen that shows the relevant matter in a color scheme other than white and red; or
- the drawing is in color and shows the cross and square/rectangle/shield in a color scheme other than white and red. In this situation, a refusal should not issue, even if the color claim, mark description, or specimen indicates that the cross and square/rectangle/shield appears in the prohibited color scheme. Instead, to address the discrepancy between the drawing and the other information in the application record, the examining attorney must require a corrected color claim, an amended mark description, and/or a matching specimen, as appropriate. In addition, the examining attorney should provide an advisory indicating that, under §2(b), the Swiss flag and Swiss coat of arms may not be registered as a trademark or service mark and that, if the applicant amends the drawing to show the cross in white and the square, rectangle, or shield in red, the mark will be refused under Trademark Act §2(b).
1205.01(d)(ii)(D) Applicant’s Response to Refusal
Section 2(b) provides an absolute bar to registration. See TMEP §1204.04(a). Thus, a disclaimer of the relevant matter will not overcome the refusal, nor will a claim of acquired distinctiveness under §2(f) or an amendment to the Supplemental Register. Id.
In addition, if registration is refused because the drawing or specimen actually shows the cross and square/rectangle/shield element in white and red, the applicant may not overcome the refusal by merely providing a statement that the mark will not be used in the prohibited colors. (If the drawing contains a black-and-white depiction of the Swiss flag or the Swiss coat of arms, and the applicant provides a statement that the mark does not, or will not, appear in the colors white and red, the statement will remain in the application record but will not be printed on any registration certificate that may issue.)
For applications based on §1, an applicant may overcome a §2(b) refusal as follows:
- Amending the Colors in the Drawing. If registration is refused because the drawing shows the relevant matter in the prohibited color scheme, amending the drawing to show the matter in another color scheme—either in different colors or in no particular colors (i.e., black and white or gray scale)—will usually be sufficient to overcome the refusal. However, amending to a non-color drawing showing the mark in black and white or gray scale will not overcome the refusal if there is other matter in the mark (e.g., wording such as "Swiss" or "Switzerland") that creates or reinforces the impression that the cross and square/rectangle/shield design in the mark is the Swiss flag or the Swiss coat of arms.
- Generally, amending the colors in the cross and square/rectangle/shield element in a mark to overcome a §2(b) refusal will not result in a material alteration of the mark. If the colors in the drawing are changed, the color claim and color description must also be amended or deleted, as appropriate. If the application is based on §1(a), the record must contain an acceptable matching specimen. Black-and-white or gray scale reproductions of specimens are not acceptable for this purpose; a color version of the specimen must be submitted.
- Amending the Color Claim/Description; Substitute Specimen. If the drawing is not in color, but registration is refused because the color claim or mark description indicates that the relevant matter appears in white and red, a §1 applicant may overcome the refusal by amending the color claim or mark description to delete any reference to color. Likewise, if the original drawing is not in color, but registration was refused because the specimen showed the relevant matter in the prohibited color scheme, the applicant may obviate the refusal by submitting a color specimen showing use of the relevant matter in the mark in colors other than white and red.
- Deleting the Coat of Arms or Flag from the Drawing. Section 1 applicants may also overcome a §2(b) refusal by deleting the unregistrable flag or coat of arms, but only if the matter is separable from other elements in the mark (e.g., the flag design is separated from, or is used as a background for, other matter in the mark) and the remaining matter is registrable. If the flag or coat or arms is deleted from the drawing, any specimen showing the mark with the deleted matter should still be considered to match the drawing. See TMEP §1204.04(b).
- Amending the Filing Basis to §1(b). If registration of the mark is refused under §2(b) because the specimen of record shows the relevant matter in white and red, applicant may amend the application filing basis to §1(b), in which case the examining attorney should withdraw the refusal. However, the refusal must be reissued if the specimen submitted with applicant’s subsequent allegation of use shows the relevant matter in the prohibited color scheme.
For applications based on §44 or §66(a), applicants generally may not make amendments to the mark; thus, the option to delete the Swiss flag or Swiss coat of arms is not available. 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§ 807.12(b), 1011.01, 1904.02(j). However, if a §44 or §66(a) application presents the mark in color, but there is no corresponding color claim in the foreign or international registration, the applicant may submit a statement that no claim of color is made with respect to the foreign or international registration and amend the drawing to a black-and-white reproduction of the mark. See TMEP §§ 1011.01, 1904.02(k). In this manner, the applicant may overcome the §2(b) refusal, provided there are no other Swiss indicia in the mark that would create the perception that the black-and-white or gray-scale coat of arms or flag in the mark is the Swiss coat of arms or Swiss flag.
1205.01(d)(iii) Other Refusals
If a mark containing matter that would be perceived as the Swiss coat of arms or Swiss flag also includes other Swiss indicia, such as the wording "Switzerland" or "Swiss," or foreign equivalents, the examining attorney should consider whether the primary significance of the mark as a whole is geographic. If so, a refusal under Trademark Act §2(e)(2) (geographically descriptive) or §2(a)/§2(e)(3) (geographically deceptive/primarily geographically deceptively misdescriptive) may be appropriate, in addition to refusals under §§1 and 45 and/or §2(b). For detailed information regarding the examination procedures relating to geographic refusals, see TMEP §§1210-1210.07(b).
Like the Swiss coat of arms and the Swiss flag, the Red Cross features an upright equilateral cross and the colors red and white. However, the color scheme in the Red Cross is reversed, displaying the cross in red and the background in white. The Red Cross is also protected by federal statute, and marks containing this matter may be subject to refusals under Trademark Act §§1 and 45 (not in lawful use) and §2(a) (false suggestion of a connection with the American National Red Cross). See 18 U.S.C. §706. If the mark contains an equilateral cross, but the application does not provide a clear indication of the colors that appear in the mark, examining attorneys should consider whether a refusal on the basis that the mark appears to contain the Red Cross may be appropriate. For additional information, see TMEP §1205.01.
Refusals for failure to function as a trademark or service mark, 15 U.S.C. §§1051, 1052, 1053, 1127 (see also TMEP §§1202, 1301.02(a)), or for likelihood of confusion, 15 U.S.C. §1052(d), may also apply to these marks.
1205.01(d)(iv) Examples
Examples of Situations Where Registration Must (or Might) Be Refused . In some of the following examples, a refusal under §§1 and 45, §2(b), or both must be issued because the drawing itself shows that the mark contains the Swiss coat of arms, the Swiss flag, or a simulation thereof. In the remaining examples, other information will dictate whether either or both refusals are appropriate.
Mark: The mark consists of the wording SWISS OVEN appearing on a banner that is positioned over a red triangular shield containing a white cross, with depictions of wheat appearing on both sides of the shield.
Analysis: The mark contains a red triangular shield containing a white equilateral cross. The shield is partially obscured and the cross is proportionally larger than the cross in the Swiss coat of arms. Nonetheless, this matter is essentially a simulation of the Swiss coat of arms (regardless of the wording in the mark). Thus, refusals under §§1 and 45 and §2(b) must be issued.
Mark: The mark consists of the wording ZURICH SWISS appearing below a red square containing a white equilateral cross.
Analysis: The mark contains the Swiss flag: a white equilateral cross on a red square. Therefore, the mark must be refused under §2(b). The wording in the mark reinforces the impression that the matter is the Swiss flag and further supports the §2(b) refusal. A refusal under §§1 and 45 is not appropriate, because this refusal applies only to the Swiss coat of arms. See TMEP §1205.01(d)(iii) regarding this mark’s geographic significance.
Mark: The mark consists of an oval carrier featuring, among other things, a triangular shield containing an upright equilateral cross. Color is not claimed as a feature of the mark.
Analysis: A §2(b) refusal must be issued because, although the shield-and-cross element is not shown in color and is slightly different from the actual Swiss coat of arms, other Swiss indicia in the mark create the impression that the design is the Swiss coat of arms. A refusal under §§1 and 45 should not be issued based on the drawing alone, because the drawing does not show the relevant matter in a white-and-red color scheme. If, however, the specimen of use or extrinsic evidence shows that the cross-and-shield element is used in the prohibited color scheme, a refusal under §§1 and 45 would be appropriate. Otherwise, an advisory or a Rule 2.61(b) requirement for additional information may be appropriate.
Mark: The mark consists of a circular carrier containing a depiction of a mountain, a triangular shield containing an upright equilateral cross, and the wording SWISS GRILL and SWISS GOURMET FOOD. Color is not claimed as a feature of the mark.
Analysis: A §2(b) refusal must be issued in this case because, although the cross-and-shield element is not shown in color, other Swiss indicia in the mark will create the impression that the design is the Swiss coat of arms. A refusal under §§1 and 45 should not be issued based on the drawing alone, because the drawing does not show the relevant matter in a white-and-red color scheme. If, however, the specimen of record or extrinsic evidence shows that the cross-and-shield element is used in the prohibited color scheme, a refusal under §§1 and 45 would be appropriate. Otherwise, an advisory or a Rule 2.61(b) requirement for additional information may be appropriate.
Mark: The mark consists of the wording ADVANCED DERMATOLOGIC SOLUTIONS, LLC appearing above a rectangle containing an upright equilateral cross. Color is not claimed as a feature of the mark.
Analysis: A §2(b) refusal is appropriate if the color claim, mark description, or specimen of record indicates that the cross appears in white and the rectangle appears in red. A refusal under §§1 and 45 would not be appropriate, regardless of the colors these elements appear in, because this refusal applies only to the Swiss coat of arms. Otherwise, an advisory or a Rule 2.61(b) requirement for additional information may be appropriate.
Mark: The mark consists of a red background containing a white cross above the wording ANDREW CHRISTIAN, which is also in white.
Analysis: The red portion of the mark represents a red background, but not necessarily a red rectangular background. If the specimen of record shows the mark in a rectangular form, then the mark is essentially a simulation of the Swiss flag and a §2(b) refusal is appropriate. The inclusion of the wording immediately below the cross would not detract from this impression. A refusal under §§1 and 45 is not appropriate because this refusal applies only to the Swiss coat of arms.
Mark: The mark consists of a rectangle containing a white equilateral cross on a red square, all of which is bordered in black, and the wording REMOTE MEDICAL INTL.
Analysis: Because it is bordered in black, the cross-and-square element in the mark is slightly different from Swiss flag. However, it is sufficiently similar to be considered a simulation of the Swiss flag. Thus, a §2(b) refusal is appropriate. A refusal under §§1 and 45 is not appropriate because this refusal applies only to the Swiss coat of arms.
Examples of Situations Where Refusal of Registration Is Not Appropriate . In the following examples, a refusal under §§1 and 45 or §2(b) is not appropriate for one or more of the following reasons: (1) the mark is displayed in a color scheme other than white and red; (2) the mark does not contain all of the characteristic elements of the Swiss coat of arms or the Swiss flag; or (3) the relevant matter in the mark is sufficiently altered, or merged with other design elements, to create a distinct commercial impression.
Mark: The mark consists of the word MCCORMACK in silver appearing above a white cross on a silver triangular background, all within a silver shield-shaped outline.
Analysis: Although the mark contains an upright equilateral cross on a triangular background, a refusal under §§1 and 45 is not appropriate because the relevant elements are not displayed in white and red. A refusal under §2(b) is not appropriate because the drawing and color claim indicate that the cross-and-shield design appear in the colors silver and white.
Mark: The mark consists of the word PROCARE, with the letters "PR" and "CARE" in blue and the letter "O" formed by a red circle containing a white cross.
Analysis: Although the mark features a design element composed of a white equilateral cross on a red background, a refusal under §§1 and 45 is not appropriate because the background shape is not a triangular shield. A §2(b) refusal is not appropriate because the relevant matter does not appear in the shape of the Swiss flag or Swiss coat of arms.
Mark: The mark consists of a red silhouette of a house containing a white equilateral cross.
Analysis: Although the mark contains an upright equilateral cross in white on a red background, this matter is integrated into a stylized silhouette of a house. As a result, the mark creates an impression of something entirely different from the Swiss flag or the Swiss coat of arms. Thus, a refusal under §§1 and 45 or §2(b) would not be appropriate.
Mark: The mark consists of a triangular shield containing an upright equilateral cross, appearing below the word REPEL and to the left of the wording ANTIMICROBIAL PROTECTED. The colors black, white, and gray are claimed as a feature of the mark.
Analysis: Although the mark contains an upright equilateral cross on a triangular shield, refusals under §§1 and 45 and §2(b) are not appropriate, because the drawing and color claim indicate that the cross-and-shield design appear in the colors black, white, and gray. These refusals should not issue, even if the specimen shows use of the cross-and-shield in the prohibited white-and-red color scheme. Instead, to address the discrepancy between the drawing and the specimen, the examining attorney must require a matching specimen that necessarily would not include the prohibited color scheme.