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); Britannica.com, Switzerland, http://www.britannica.com/EBchecked/topic/577225/Switzerland (accessed Feb. 1, 2024); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/ (accessed Feb. 1, 2024).
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 Feb. 1, 2024) (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 Feb. 1, 2024); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/flag (accessed Feb. 1, 2024).
Swiss Coat of Arms
Swiss Flag
The primary refusal that applies to marks containing the Swiss coat of arms, the Swiss flag, or simulations thereof, is a refusal under Trademark Act §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. A refusal under §2(e)(2) (geographically descriptive) or §2(a)/§2(e)(3) (geographically deceptive/primarily geographically deceptively misdescriptive) may also be appropriate. 15 U.S.C §1052(e); see also TMEP §§1210-1210.07(b).
1205.01(d)(i) 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)(i)(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 Feb. 1, 2024) (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 Feb. 1, 2024); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/flag (accessed Feb. 1, 2024). 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.
1205.01(d)(i)(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)(i)(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)(i)(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)(ii) 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 a refusal under §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)(iii) Examples
Examples of Situations Where Registration Must (or Might) Be Refused . In some of the following examples, a refusal under §2(b) 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 a refusal is 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, a refusal under §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. 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.
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.
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.
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.
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.
Examples of Situations Where Refusal of Registration Is Not Appropriate . In the following examples, a refusal under §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 §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 §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 §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, 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 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.