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. See18 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 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.