1205.01(a) Examination Procedures for Marks Comprising a Red Crystal or Red Crescent on a White Background, or the Phrases "Red Crescent" or "Third Protocol Emblem"
On December 8, 2005, the United States signed the Third Protocol Additional to the 1949 Geneva Conventions relating to the Adoption of an Additional Distinctive Emblem (the "Protocol"). The Protocol creates two new distinctive emblems: (1) the Third Protocol Emblem, composed of a red diamond on a white background (shown below); and (2) the Red Crescent, composed of a red crescent on a white background (shown below).
Effective January 12, 2007, Public Law 109-481, 120 Stat. 3666, created a new criminal statutory provision, 18 U.S.C. §706a, to prohibit the use of the distinctive emblems the Red Crystal and the Red Crescent, or any imitation thereof, as well as the designations "Third Protocol Emblem" and "Red Crescent," except by those authorized to wear, display, or use them under the provisions of the Geneva Conventions. Geneva Distinctive Emblems Protection Act of 2006, Pub. L. No. 109-481, 120 Stat. 3666 (2007). The statute carves out an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before December 8, 2005, if use of these would not appear in time of armed conflict to confer the protections of the Geneva Conventions of August 12, 1949. Id. The provisions of 18 U.S.C. §706a closely mirror the existing provision in 18 U.S.C. §706 for the American National Red Cross (see TMEP §1205.01).
1205.01(a)(i) First Use After December 8, 2005
If a party other than an authorized party (see TMEP §1205.01(a)(vi) for definition of authorized party) applies to register the Red Crescent, the Third Protocol Emblem, or the designation "Red Crescent" or "Third Protocol Emblem," and claims a date of first use in commerce after December 8, 2005, the examining attorney must refuse registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a), on the ground that the mark comprises matter that may falsely suggest a connection with the International Federation of Red Cross and Red Crescent Societies and/or other authorized parties under the statute. See 18 U.S.C. §706a; TMEP §1203.03(e). The examining attorney must provide appropriate supporting evidence for the refusal. In addition, a refusal must also be made on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127.
When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark or, in the case of services, §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, as appropriate. See TMEP §1202.
1205.01(a)(ii) First Use On or Before December 8, 2005 – Grandfather Clause
Registration of the Red Crescent, the Third Protocol Emblem, or the designation "Red Crescent" or "Third Protocol Emblem" need not be refused where, in an application under §1 of the Trademark Act, 15 U.S.C. §1051, the applicant claims a date of first use in commerce on or before December 8, 2005, if the goods and services would not appear in time of armed conflict to confer the protections of the Geneva Conventions. 18 U.S.C. §706a. However, registration should be refused under §2(a) and §§1 and 45 of the Act if the goods or services are of a type typically offered as emergency relief or assistance in times of armed conflict. Such services may include, but are not limited to, medical assistance, religious, and charitable services. For example, applications for clothing, food items, or first-aid services must be refused under §2(a) and §§1 and 45 of the Trademark Act. The refusals can be withdrawn if the applicant amends the identification to indicate that the goods/services are not offered as emergency relief or assistance in time of armed conflict.
When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark or, in the case of services, §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, as appropriate. See TMEP §1202.
1205.01(a)(iii) Date of First Use Not Specified
For applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the date of first use in commerce is or will be after December 8, 2005, unless the application record indicates otherwise.
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 Red Crescent, the Third Protocol Emblem, or the designation "Red Crescent" or "Third Protocol Emblem," actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce. See 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 prohibited symbols or wording.
1205.01(a)(iv) Applicable Refusals
The statute prohibiting use of the Red Crystal and Red Crescent symbols by unauthorized parties applies to "any sign or insignia made or colored in imitation thereof." 18 U.S.C. §706a. If the mark includes a design element where the color red is claimed, and the design would be likely to be perceived as the Red Crystal symbol or the Red Crescent symbol, and it is is not significantly altered, stylized, or merged with other elements in the mark, the examining attorney must refuse registration under §§1 and 45, because the mark is not in lawful use in commerce, and under §2(a), if any of the following conditions exist:
- the mark drawing or foreign registration shows the symbol in red;
- the mark drawing is not in color, but the specimen shows the symbol in red; or
- the mark drawing is not in color, but it includes the wording "Red Crescent" or "Third Protocol Emblem."
See TMEP §§1205.01(a) and 1205.01(a)(i). The refusals may be withdrawn if the applicant amends the mark drawing to a different, non-prohibited color scheme, or a non-color version of the mark drawing (i.e., a black-and-white or gray scale drawing) or submits a proper substitute specimen showing use of the mark in a color other than red. Cf. TMEP §§1205.01(d)(i)(D), 1205.01(d)(ii)(D). However, a photocopy of the original specimen is not an acceptable substitute specimen.
A mark that includes a crescent or crystal design element will generally be considered registrable, and will not be refused under §§1 and 45, or under §2(a), if the applicant does not claim color as a feature of the mark and the specimen shows the symbol in a color other than red. In such cases, a statement that the mark is not used in the color red is unnecessary, and if submitted, must not be printed on the registration certificate.
Regarding the phrases "Red Crescent" and "Third Protocol Emblem," the statute prohibiting use of these designations does not apply to variations or modifications of these words. Only marks that include the exact wording RED CRESCENT or THIRD PROTOCOL EMBLEM, with or without additional wording, must be refused under §2(a) and §§1 and 45.
For example, REDCRESCENTS would not be refused registration, but RED CRESCENT DONOR could be refused registration if the date of first use is after December 8, 2005, or the application otherwise fails to qualify for the grandfather clause described in TMEP §1205.01(a)(ii).
1205.01(a)(v) Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation
If the mark is unregistrable because it includes the Red Crescent or Third Protocol symbols or words, a disclaimer of the unregistrable matter will not render the mark registrable. Similarly, disclaimer of the color red is inappropriate, and will not obviate a refusal of registration.
On the other hand, if the unregistrable symbol or designation is deleted from the mark sought to be registered, the examining attorney should withdraw the refusal(s) based on the unregistrable symbol or designation, and, if necessary, refuse registration because the amendment to the mark is material. Deletions of matter determined to be unregistrable under §2(a) of the Act are sometimes permissible. See TMEP §807.14(a).
The examining attorney may also permit an amendment from a color drawing to a black-and-white drawing, to eliminate the claim of the color red, if such an amendment would not constitute a material alteration of the mark, and the amendment is supported by a proper specimen. See TMEP §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks, and TMEP §1205.01(a)(iv) regarding the situation where the applicant does not claim color as a feature of the mark, but the specimen shows use of the mark in red.
1205.01(a)(vi) Parties Authorized to use the Red Crescent and Third Protocol Emblem
Under 18 U.S.C. §706a, the following parties are authorized to use the Red Crescent symbol and the Third Protocol Emblem on a white background and the designations "Red Crescent" and "Third Protocol Emblem:"
- (1) authorized national societies that are members of the International Federation of Red Cross and Red Crescent Societies, and their duly authorized employees and agents;
- (2) the International Committee of the Red Cross, and its duly authorized employees and agents;
- (3) the International Federation of Red Cross and Red Crescent Societies, and its duly authorized employees and agents; and
- (4) the sanitary and hospital authorities of the armed forces of State Parties to the Geneva Conventions of August 12, 1949.
If the applicant is not clearly authorized to use an emblem or designation, the examining attorney must refuse registration. The refusal may be withdrawn if the applicant or the applicant’s attorney submits a statement that the applicant is an authorized party, and indicates the reason why the applicant is authorized (e.g., applicant is an authorized agent of the International Federation of Red Cross and Red Crescent Societies).