TMEP / Substantive Examination of Applications

Chapter 1200 Substantive Examination of Applications

Substantive Examination of Applications
1201 Ownership of Mark

Under §1(a)(1) of the Trademark Act,15 U.S.C. §1051(a)(1),  a trademark or service mark application based on use in commerce must be filed by the owner of the mark. A §1(a) application must include a verified statement that the applicant believes the applicant is the owner of the mark sought to be registered.15 U.S.C. §1051(a)(3)(A)37 C.F.R. §2.33(b)(1). An application that is not filed by the owner is void.SeeTMEP §1201.02(b).

A trademark or service mark application under §1(b) or §44 of the Act,15 U.S.C. §§1051(b)1126, must be filed by a party who is entitled to use the mark in commerce, and must include a verified statement that the applicant is entitled to use the mark in commerce and that the applicant has a bona fide intention to use the mark in commerce as of the application filing date.15 U.S.C. §§1051(b)(3)(A)-(B)1126(d)(2),1126(e);37 C.F.R. §2.33(b)(2). When the person designated as the applicant is not the person with a bona fide intention to use the mark in commerce, the application is void.SeeTMEP §1201.02(b).

In a §1(b) application, before the mark can be registered, the applicant must file an amendment to allege use under15 U.S.C. §1051(c)  (seeTMEP §§1104-1104.11) or a statement of use under15 U.S.C. §1051(d)  (seeTMEP §§1109-1109.18) which states that the applicant is the owner of the mark.15 U.S.C. §1051(b)37 C.F.R. §§2.76(b)(1)(i),2.88(b)(1)(i).

In a §44 application, the applicant must be the owner of the foreign application or registration on which the U.S. application is based as of the filing date of the U.S. application.SeeTMEP §1005.

An application under §66(a) of the Trademark Act (i.e.,a request for extension of protection of an international registration to the United States under the Madrid Protocol), must be filed by the holder of the international registration.15 U.S.C. §1141e(a)37 C.F.R. §7.25. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce.15 U.S.C. §1141(f)(a)37 C.F.R. §2.33(e)(1). The verified statement in a §66(a) application for a trademark or service mark is part of the international registration on file at the International Bureau of the World Intellectual Property Organization (“IB”). The IB will have established that the international registration includes this verified statement before it sends the request for extension of protection to the United States Patent and Trademark Office (“USPTO”).SeeTMEP §804.05. The request for extension of protection remains part of the international registration, and ownership is determined by the IB. SeeTMEP §501.07 regarding assignment of §66(a) applications.

The provisions discussed above also apply to collective and certification marks with the caveat that the owner of such marks does not use the mark or have a bona fide intention to do so, but rather exercises control over its use by members/authorized users or has a bona fide intention, and is entitled, to exercise such control over the use by members/authorized users.See15 U.S.C. §§10531054;TMEP §§1303.02(a),1304.03(a),1306.01(a).

1201.01 Claim of Ownership May Be Based on Use By Related Companies

In an application under §1 of the Trademark Act, an applicant may base its claim of ownership of a trademark or a service mark on:

  • (1) its own exclusive use of the mark;
  • (2) use of the mark solely by a related company whose use inures to the applicant’s benefit (seeTMEP §§1201.03–1201.03(e)); or
  • (3) use of the mark both by the applicant and by a related company whose use inures to the applicant’s benefit (seeTMEP §1201.05).

Where the mark is used by a related company, the owner is the party who controls the nature and quality of the goods sold or services rendered under the mark. The owner is the only proper party to apply for registration.15 U.S.C. §1051SeeMoreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017) (finding that a mere licensee cannot rely on licensor's use to prove priority). SeeTMEP §§1201.03–1201.03(e) for additional information about use by related companies.

The examining attorney should accept the applicant’s statement regarding ownership of the mark unless it is clearly contradicted by information in the record.In re L. A. Police Revolver & Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2003) .

The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark. Moreover, where the application states that use of the mark is by a related company or companies, the examining attorney should not require any explanation of how the applicant controls such use.

The provisions discussed above also apply to service marks, collective marks, and certification marks, except that, by definition, collective and certification marks are not used by the owner of the mark, but are used by others under the control of the owner.See15 U.S.C. §§10531054;TMEP §§1303.02(a),1304.03(a),1306.01(a). In addition, an application for registration of a collective mark must specify the nature of the applicant’s control over use of the mark.37 C.F.R. §2.44(a)(4)(i)(A);TMEP §1303.01(a)(i)(A).

SeeTMEP §1201.04 for information about when an examining attorney should issue an inquiry or refusal with respect to ownership.

1201.02 Identifying the Applicant in the Application
1201.02(a) Identifying the Applicant Properly

The applicant may be any person or entity capable of suing and being sued in a court of law. SeeTMEP §§803-803.03(k) for the appropriate format for identifying the applicant and setting forth the relevant legal entity.

1201.02(b) Application Void if Wrong Party Identified as the Applicant

An application must be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date.SeeTMEP §1201.

An application based on use in commerce under15 U.S.C. §1051(a)  must be filed by the party who owns the mark on the application filing date. If the applicant does not own the mark on the application filing date, the application isvoid.37 C.F.R. §2.71(d); );Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1027, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017);Conolty v. Conolty O'Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014);see Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988);Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1239 (TTAB 2007) .

If the record indicates that the applicant is not the owner of the mark, the examining attorney should refuse registration on that ground. The statutory basis for this refusal is §1 of the Trademark Act,15 U.S.C. §1051,  and, where related company issues are relevant, §§5 and 45 of the Act,15 U.S.C. §§10551127. The examining attorney should not have the filing date cancelled or refund the application filing fee.

In an application under §1(b) or §44 of the Trademark Act,15 U.S.C. §1051(b)§1126, the applicant must be entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce.15 U.S.C. §§1051(b)(3)(A)1051(b)(3)(B),1126(d)(2),1126(e). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void.Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999) , (holding an intent-to-use application filed by an individual void, where the entity that had a bona fide intention to use the mark in commerce on the application filing date was a partnership composed of the individual applicant and her husband),aff’d, 232 F.3d 907 (Fed. Cir. 2000) . However, the examining attorney will not inquire into the bona fides, or good faith, of an applicant’s asserted intention to use a mark in commerce during ex parte examination, unless there is evidence in the record clearly indicating that the applicant does not have a bona fide intention to use the mark in commerce.SeeTMEP §1101.

When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment.37 C.F.R. §2.71(d);TMEP §803.06. However, if the application was filed by the owner, but there was a mistake in the manner in which the applicant’s name was set forth in the application, this may be corrected. SeeTMEP §1201.02(c) for examples of correctable and non-correctable errors.

SeeTMEP §1201 regarding ownership of a §66(a) application.

1201.02(c) Correcting Errors in How the Applicant Is Identified

If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be corrected by amendment.U.S. Pioneer Elec. Corp. v. Evans Mktg., Inc., 183 USPQ 613 (Comm’r Pats. 1974). However, the application may not be amended to designate another entity as the applicant.37 C.F.R. §2.71(d);TMEP §803.06. An application filed in the name of the wrong party is void and cannot be corrected by amendment.37 C.F.R. §2.71(d);seeHuang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988);Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1244 (TTAB 2007) ;In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).

Correctable Errors. The following are examples of correctable errors in identifying the applicant:

  • (1)Trade Name Set Forth as Applicant. If the applicant identifies itself by a name under which it does business, which is not a legal entity, then amendment to state the applicant’s correct legal name is permitted.Cf. In re Atl. Blue Print Co., 19 USPQ2d 1078 (Comm'r Pats 1990) (finding that Post Registration staff erred in refusing to allow amendment of affidavit under15 U.S.C. §1058  to show registrant’s corporate name rather than registrant’s trade name).
  • (2)Operating Division Identified as Applicant. If the applicant mistakenly names an operating division, which by definition is not a legal entity, as the owner, then the applicant’s name may be amended.SeeTMEP §1201.02(d).
  • (3)Minor Clerical Error. Minor clerical errors such as the mistaken addition or omission of “The” or “Inc.” in the applicant’s name may be corrected by amendment, as long as this does not result in a change of entity. However, change of a significant portion of the applicant’s name is not considered a minor clerical error.
  • (4)Inconsistency in Original Application as to Owner Name or Entity. If the original application reflects an inconsistency between the owner name and the entity type, for example, an individual and a corporation are each identified as the owner in different places in the application, the application may be amended to clarify the inconsistency.

    Example: Inconsistency Between Owner Section and Entity Section of TEAS Form: If the information in the “owner section” of a TEAS application form is inconsistent with the information in the “entity section” of the form, the inconsistency can be corrected, for example, if an individual is identified as the owner and a corporation is listed as the entity, the application may be amended to indicate the proper applicant name/entity.

    Signature of Verification by Different Entity Does Not Create Inconsistency. In view of the broad definition of a “person properly authorized to sign on behalf of the [applicant]” in37 C.F.R. §2.193(e)(1)(seeTMEP §611.03(a)), if the person signing an application refers to a different entity, the USPTO will presume that the person signing is an authorized signatory who meets the requirements of37 C.F.R. §2.193(e)(1), and will not issue an inquiry regarding the inconsistency or question the signatory’s authority to sign. If the applicant later requests correction to identify the party who signed the verification as the owner, the USPTO will not allow the amendment. For example, if the application is filed in the name of “John Jones, individual U.S. citizen,” the verification is signed by “John Jones, President of ABC Corporation,” and the applicant later proposes to amend the application to show ABC Corporation as the owner, the USPTO will not allow the amendment, because there was no inconsistency in the original application as to the owner name/entity.

  • (5)Change of Name. If the owner of a mark legally changed its name before filing an application, but mistakenly lists its former name on the application, the error may be corrected, because the correct party filed, but merely identified itself incorrectly.In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982).
  • (6)Partners Doing Business as Partnership. If an applicant has been identified as “A and B, doing business as The AB Company, a partnership,” and the true owner is a partnership organized under the name The AB Company and composed of A and B, the applicant’s name should be amended to “The AB Company, a partnership composed of A and B.”
  • (7)Non-Existent Entity. If the party listed as the applicant did not exist on the application filing date, the application may be amended to correct the applicant’s name.SeeAccu Pers. Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB 1996) (holding application not void ab initio where corporation named as applicant technically did not exist on filing date, since four companies who later merged acted as a single commercial enterprise when filing the application);Argo & Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (holding that application may be amended to name three individuals as joint applicants in place of an originally named corporate applicant which was never legally incorporated, because the individuals and non-existent corporation were found to be the same, single commercial enterprise);Pioneer Elec., 183 USPQ 613 (holding that applicant’s name may be corrected where the application was mistakenly filed in the name of a fictitious and non-existent party).

    Example 1: If the applicant is identified as ABC Company, a Delaware partnership, and the true owner is ABC LLC, a Delaware limited liability company, the application may be amended to correct the applicant’s name and entity if the applicant states on the record that “ABC Company, a Delaware partnership, did not exist as a legal entity on the application filing date.”

    Example 2: If an applicant is identified as “ABC Corporation, formerly known as XYZ, Inc.,” and the correct entity is “XYZ, Inc.,” the applicant’s name may be amended to “XYZ, Inc.” as long as “ABC Corporation, formerly known as XYZ, Inc.” was not a differentexisting legal entity.Cf. Custom Computer Serv. Inc. v. Paychex Prop. Inc., 337 F.3d 1334, 1337, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (holding that the term "mistake," within the context of the rule regarding the misidentification of the person in whose name an extension of time to file an opposition was requested, means a mistake in the form of the potential opposer's name or its entity type and does not encompass the recitation of a different existing legal entity that is not in privity with the party that should have been named).

To correct an obvious mistake of this nature, a verification or declaration is not normally necessary.

Non-Correctable Errors. The following are examples of non-correctable errors in identifying the applicant:

  • (1)President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.
  • (2)Predecessor in Interest. If an application is filed in the name of entity A, when the mark was assigned to entity B before the application filing date, the application is void as filed because the applicant was not the owner of the mark at the time of filing.Cf. Huang, 849 F.2d at 1458, 7 USPQ2d at 1335 (holding as void an application filed by an individual two days after ownership of the mark was transferred to a newly formed corporation).
  • (3)Joint Venturer Files. If the application is filed in the name of a joint venturer when the mark is owned by the joint venture, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a joint venture in the entity section of the application), the applicant’s name cannot be amended.Tong Yang Cement, 19 USPQ2d at 1689.
  • (4)Sister Corporation. If an application is filed in the name of corporation A and a sister corporation (corporation B) owns the mark, the application is void as filed, because the applicant is not the owner of the mark.Great Seats, 84 USPQ2d at 1244 (holding §1(a) application void where the sole use and advertising of the mark was made by a sister corporation who shared the same president, controlling shareholder, and premises as the applicant).
  • (5)Parent/Subsidiary. If an application is filed in the name of corporation A, a wholly owned subsidiary, and the parent corporation (corporation B) owns the mark, the application is void as filed because the applicant is not the owner of the mark. SeeTMEP §1201.03(b) regarding wholly owned related companies.
  • (6)Joint Applicants. If an application owned by joint applicants is filed in the name of one of the owners and another party who is not the joint owner, the application is void as filed because the listed parties did not own the mark as joint applicants.Cf.Am. Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999) (application filed in the name of an individual, when it was actually owned by a partnership composed of the individual and her husband, was void ab initio).
1201.02(d) Operating Divisions

An operating division that is not a legal entity that can sue and be sued does not have standing to own a mark or to file an application to register a mark. The application must be filed in the name of the company of which the division is a part.In re Cambridge Digital Sys., 1 USPQ2d 1659, 1660 n.1 (TTAB 1986) . An operating division’s use is considered to be use by the applicant and not use by a related company; therefore, reference to related-company use is permissible but not necessary.

1201.02(e) Changes in Ownership After Application Is Filed

SeeTMEP Chapter 500 regarding changes of ownership and changes of name subsequent to filing an application for registration, andTMEP §§502.02–502.02(b) regarding the procedure for requesting that a certificate of registration be issued in the name of an assignee or in an applicant’s new name.

1201.03 Use by Related Companies

Section 5 of the Trademark Act,15 U.S.C. §1055,  states, in part, as follows:

Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public.

Section 45 of the Act,15 U.S.C. §1127,  defines “related company” as follows:

The term “related company” means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.

Thus, §5 of the Act permits applicants to rely on use of the mark by related companies. Either a natural person or a juristic person may be a related company.15 U.S.C.  §1127.

The essence of related-company use is the control exercised over the nature and quality of the goods or services on or in connection with which the mark is used.Noble House Home Furnishings, LLC v. Floorco Enters., LLC,118 USPQ2d 1413, 1421 (TTAB 2016). When a mark is used by a related company, use of the mark inures to the benefit of the party who controls the nature and quality of the goods or services.Id. This party is the owner of the mark and, therefore, the only party who may apply to register the mark.Smith Int’l. Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981) .

Reliance on related-company use requires,inter alia, that the related company use the mark in connection with the same goods or services recited in the application.In re Admark, Inc., 214 USPQ 302, 303 (TTAB 1982) (finding that related-company use was not at issue where the applicant sought registration of a mark for advertising-agency services and the purported related company used the mark for retail-store services).

A related company is different from a successor in interest who is in privity with the predecessor in interest for purposes of determining the right to register.Wells Cargo, Inc. v. Wells Cargo, Inc., 197 USPQ 569, 570 (TTAB 1977) ,aff’d,606 F.2d 961, 203 USPQ 564 (C.C.P.A. 1979).

SeeTMEP §1201.03(b)regarding wholly owned related companies,§1201.03(c) regarding corporations with common stockholders, directors, or officers,§1201.03(d)regarding sister corporations, and§1201.03(e)regarding license and franchise situations.

1201.03(a) No Explanation of Use of Mark by Related Companies or Applicant’s Control Over Use of Mark by Related Companies Required

The USPTO does not require an application to specify if the applied-for mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under §5 of the Act. Moreover, where the application states that use of the mark is by a related company or companies, the USPTO does not require an explanation of how the applicant controls the use of the mark.

Additionally, the USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark.SeeTMEP §1201.04. In such cases, the USPTO may require such details concerning the nature of the relationship and such proofs as may be necessary and appropriate for the purpose of showing that the use by related companies inures to the benefit of the applicant and does not affect the validity of the mark.37 C.F.R. §2.38(b).

1201.03(b) Wholly Owned Related Companies

Frequently, related companies comprise parent and wholly owned subsidiary corporations. Either a parent corporation or a subsidiary corporation may be the proper applicant, depending on the facts concerning ownership of the mark. The USPTO will consider the filing of the application in the name of either the parent or the subsidiary to be the expression of the intention of the parties as to ownership in accord with the arrangements between them. However, once the application has been filed in the name of either the parent or the wholly owned subsidiary, the USPTO will not permit an amendment of the applicant’s name to specify the other party as the owner. The applicant’s name can be changed only by assignment.

Furthermore, once an application has been filed in the name of either the parent or the wholly owned subsidiary, the USPTO will not consider documents (e.g., statements of use under15 U.S.C. §1051(d)  or affidavits of continued use or excusable nonuse under15 U.S.C. §1058)  filed in the name of the other party to have been filed by the owner.SeeIn re Media Cent. IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002) (holding §8 affidavit filed in the name of a subsidiary and predecessor in interest of the current owner unacceptable);In re ACE III Commc'ns, Inc., 62 USPQ2d 1049 (Dir USPTO 2001) (holding §8 affidavit unacceptable where the owner of the registration was a corporation, and the affidavit was filed in the name of an individual who asserted that she was the owner of the corporation).

Either an individual or a juristic entity may own a mark that is used by a wholly owned related company.In re Hand, 231 USPQ 487 (TTAB 1986) .

1201.03(c) Common Stockholders, Directors, or Officers

Corporations are not “related companies” within the meaning of §5 of the Trademark Act,15 U.S.C. §1055,  merely because they have the same stockholders, directors, or officers, or because they occupy the same premises.Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1243 (TTAB 2007) (holding that the fact that both the applicant corporation and the corporate user of the mark have the same president and controlling stockholder, and share the same premises, does not make them related companies);In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983) ( holding statement that both the applicant corporation and the corporate user of the mark have the same principal stockholder and officer insufficient to show that the user is a related company).

If an individual applicant is not the sole owner of the corporation that is using the mark, the question of whether the corporation is a “related company” depends on whether the applicant maintains control over the nature and quality of the goods or services such that use of the mark inures to the applicant’s benefit. A formal written licensing agreement between the parties is not necessary, nor is its existence sufficient to establish ownership rights. The critical question is whether the applicant sufficiently controls the nature and quality of the goods or services with which the mark is used.See Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981) (holding that the applicant, an individual, exercised sufficient control over the nature and quality of the goods sold under the mark by the licensee that the license agreement vested ownership of the mark in the applicant).

Similarly, where an individual applicant is not the sole owner of the corporation that is using the mark, the fact that the individual applicant is a stockholder, director, or officer in the corporation is insufficient in itself to establish that the corporation is a related company. The question depends on whether the applicant maintains control over the nature and quality of the goods or services.

SeeTMEP §1201.03(b) regarding use by wholly owned related companies.

1201.03(d) Sister Corporations

The fact that two sister corporations are controlled by a single parent corporation does not mean that they are related companies. Where two corporations are wholly owned subsidiaries of a common parent, use by one sister corporation is not considered to inure to the benefit of the other, unless the applicant sister corporation exercises appropriate control over the nature and quality of the goods or services on or in connection with which the mark is used.Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1242 (TTAB 2007) ;In re Pharmacia Inc., 2 USPQ2d 1883, 1884 (TTAB 1987) ; Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473, 475 (TTAB 1982) .

SeeTMEP §1201.03(b) regarding use by wholly owned related companies.

1201.03(e) License and Franchise Situations

The USPTO accepts applications by parties who claim to be owners of marks through use by controlled licensees, pursuant to a contract or agreement.Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981).

A controlled licensing agreement may be recognized whether oral or in writing.In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983) .

If the application indicates that use of the mark is pursuant to a license or franchise agreement, and the record contains nothing that contradicts the assertion of ownership by the applicant (i.e., the licensor or franchisor), the examining attorney will not inquire about the relationship between the applicant and the related company (i.e., the licensee or franchisee).

Ownership rights in a trademark or service mark may be acquired and maintained through the use of the mark by a controlled licensee even when the only use of the mark has been made, and is being made, by the licensee.Turner v. HMH Publ'g Co., 380 F.2d 224, 229, 154 USPQ 330, 334 (5th Cir. 1967), cert. denied, 389 U.S. 1006, 156 USPQ 720 (1967);Cent. Fid. Banks, Inc. v. First Bankers Corp. of Fla., 225 USPQ 438, 440 (TTAB 1984) (holding that use of the mark by petitioner’s affiliated banks considered to inure to the benefit of petitioner bank holding company, even though the bank holding company could not legally render banking services and, thus, could not use the mark). However, a mere licensee cannot rely on use of the mark by the licensor, whether through the license or otherwise, to establish priority.Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017).

Joint applicants enjoy rights of ownership to the same extent as any other “person” who has a proprietary interest in a mark. Therefore, joint applicants may license others to use a mark and, by exercising sufficient control and supervision of the nature and quality of the goods or services to which the mark is applied, the joint applicants/licensors may claim the benefits of the use by the related company/licensee.In re Diamond Walnut Growers, Inc. and Sunsweet Growers Inc., 204 USPQ 507, 510 (TTAB 1979) .

Stores that are operating under franchise agreements from another party are considered “related companies” of that party, and use of the mark by the franchisee/store inures to the benefit of the franchisor.Mr. Rooter Corp. v. Morris, 188 USPQ 392, 394 (E.D. La. 1975); Southland Corp. v. Schubert, 297 F. Supp. 477, 160 USPQ 375, 381 (C.D. Cal. 1968).

In all franchise and license situations, the key to ownership is the nature and extent of the control by the applicant over the goods or services to which the mark is applied. A trademark owner who fails to exercise sufficient control over licensees or franchisees may be found to have abandoned its rights in the mark.SeeHurricane Fence Co. v. A-1 Hurricane Fence Co., 468 F. Supp. 975, 986; 208 USPQ 314, 325 (S.D. Ala. 1979).

In general, where the application states that a mark is used by a licensee or franchisee, the USPTO does not require an explanation of how the applicant controls the use.

1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record

The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark.

The examining attorney should inquire about another party if the record specifically states that another party is the owner of the mark, or if the record specifically identifies the applicant in a manner that contradicts the claim of ownership, for example, as a licensee. In these circumstances, registration should be refused under §1 of the Trademark Act, on the ground that the applicant is not the owner of the mark. Similarly, when the record indicates that the applicant is a United States distributor, importer, or other distributing agent for a foreign manufacturer, the examining attorney should require the applicant to establish its ownership rights in the United States in accordance withTMEP §1201.06(a).

Where the specimen of use indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer.SeeTMEP §1201.06(b). Also, where the application states that use of the mark is by related companies, an explanation of how the applicant controls use of the mark by the related companies is not required.SeeTMEP §1201.03(a).

1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use

An applicant’s claim of ownership of a mark may be based on the applicant’s own use of the mark, even though there is also use by a related company. The applicant is the owner by virtue of the applicant’s own use, and the application does not have to refer to use by a related company.

An applicant may claim ownership of a mark when the mark is applied on the applicant’s instruction. For example, if the applicant contracts with another party to have goods produced for the applicant and instructs the party to place the mark on the goods, that is considered the equivalent of the applicant itself placing the mark on its own goods and reference to related-company use is not necessary.

1201.06 Special Situations Pertaining to Ownership
1201.06(a) Applicant Is Merely Distributor or Importer

A distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade.See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983); Audioson Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977); Jean D’Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In re Lettmann,183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of America Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods bearing the mark of a manufacturer or producer is neither the owner nor a related-company user of the mark.

If the applicant merely distributes or imports goods for the owner of the mark, registration must be refused under §1 of the Trademark Act,except in the following situations:

  • (1) If a parent and wholly owned subsidiary relationship exists between the distributor and the manufacturer, then the applicant’s statement that such a relationship exists disposes of an ownership issue.SeeTMEP §1201.03(b).
  • (2) If an applicant is the United States importer or distribution agent for a foreign manufacturer, then the applicant can register the foreign manufacturer’s mark in the United States, if the applicant submits one of the following:
  • (a) written consent from the owner of the mark to registration in the applicant’s name, or
  • (b) written agreement or acknowledgment between the parties that the importer or distributor is the owner of the mark in the United States, or
  • (c) an assignment (or true copy) to the applicant of the owner’s rights in the mark as to the United States together with the business and good will appurtenant thereto.

See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987);In re Geo. J. Ball, Inc., 153 USPQ 426 (TTAB 1967).

The Board has also found that a mere licensee cannot rely on the licensor’s use to prove priority.Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017).

1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located

Where a specimen indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer. If, however, information in the record clearly contradicts the applicant’s verified claim of ownership (e.g., a statement in the record that the mark is owned by the foreign manufacturer and that the applicant is only an importer or distributor), then registration must be refused under §1,15 U.S.C. §1051,  unless registration in the United States by the applicant is supported by the applicant’s submission of one of the documents listed inTMEP §1201.06(a).

1201.06(c) Applicant Using Designation of a U.S. Government Agency or Instrumentality

For a mark that would otherwise be subject to a refusal under §2(a) because it falsely suggests a connection with a designation of a U.S. government agency, instrumentality, or program, such as names, acronyms, titles, terms, and symbols, but the record demonstrates that the applicant has some affiliation with the agency or program, the examining attorney must issue an information request under37 C.F.R §2.61(b) requiring further information as to ownership of the designation and authorization to register. If it appears that the applicant lacks authorization to register the designation in the mark, the examining attorney may refuse to register under §1 of the Trademark Act because the applicant is not the owner of the governmental designation in the mark. The mark may also be refused under §2(a) for false suggestion of a connection and under §§1 and 45 when such marks are the subject of statutory protection. SeeTMEP §1203.03(c)(ii) for refusals under false association for Government Agencies and Instrumentalities,TMEP §1205.01 for information about statutorily protected matter, andAppendix C for a non-exhaustive list of U.S. statutes protecting designations of certain government agencies and instrumentalities.

Disclaiming the name of, or acronym for, the U.S. government agency or instrumentality to which the mark refers generally will not overcome the refusal under §§1 and 45. SeeTMEP §1213.03(a) regarding unregistrable components of marks.

1201.07 Related Companies and Likelihood of Confusion
1201.07(a) “Single Source” – “Unity of Control”

Section 2(d) of the Trademark Act,15 U.S.C. §1052(d),  requires that the examining attorney refuse registration when an applicant’s mark, as applied to the specified goods or services, so resembles a registered mark as to be likely to cause confusion. In general, registration of confusingly similar marks to separate legal entities is barred by §2(d).SeeTMEP §§1207–1207.01(d)(xi). However, the Court of Appeals for the Federal Circuit has held that, where the applicant is related in ownership to a company that owns a registered mark that would otherwise give rise to a likelihood of confusion, the examining attorney must consider whether, in view of all the circumstances, use of the mark by the applicant is likely to confuse the public about the source of the applicant’s goods because of the resemblance of the applicant’s mark to the mark of the other company. The Court stated that:

The question is whether, despite the similarity of the marks and the goods on which they are used, the public is likely to be confused about the source of the hair straightening products carrying the trademark “WELLASTRATE.” In other words, is the public likely to believe that the source of the product is Wella U.S. rather than the German company or the Wella organization.

In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276 (Fed. Cir. 1986);cf. In re Wacker Neuson SE,97 USPQ2d 1408 (TTAB 2010) (finding that the record made clear that the parties were related and that the goods and services were provided by the applicant).

TheWella Court remanded the case to the Board for consideration of the likelihood of confusion issue. In ruling on that issue, the Board concluded that there was no likelihood of confusion, stating as follows:

[A] determination must be made as to whether there exists a likelihood of confusion as to source, that is, whether purchasers would believe that particular goods or services emanate from a single source, when in fact those goods or services emanate from more than a single source. Clearly, the Court views the concept of “source” as encompassing more than “legal entity.” Thus, in this case, we are required to determine whether Wella A.G. and Wella U.S. are the same source or different sources . . . .

The existence of a related company relationship between Wella U.S. and Wella A.G. is not, in itself, a basis for finding that any “WELLA” product emanating from either of the two companies emanates from the same source. Besides the existence of a legal relationship, there must also be a unity of control over the use of the trademarks. “Control” and “source” are inextricably linked. If, notwithstanding the legal relationship between entities, each entity exclusively controls the nature and quality of the goods to which it applies one or more of the various “WELLA” trademarks, the two entities are in fact separate sources. Wella A.G. has made of record a declaration of the executive vice president of Wella U.S., which declaration states that Wella A.G. owns substantially all the outstanding stock of Wella U.S. and “thus controls the activities and operations of Wella U.S., including the selection, adoption and use of the trademarks.” While the declaration contains no details of how this control is exercised, the declaration is sufficient, absent contradictory evidence in the record, to establish that control over the use of all the “WELLA” trademarks in the United States resides in a single source.

In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) (emphasis in original),rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988).

Therefore, in some limited circumstances, the close relationship between related companies will obviate any likelihood of confusion in the public mind because the related companies constitute a single source. SeeTMEP §§1201.07(b)-1201.07(b)(iv) for further information.

1201.07(b) Appropriate Action with Respect to Assertion of Unity of Control

First, it is important to note that analysis under Wella is not triggered until an applicant affirmatively asserts that a §2(d) refusal is inappropriate because the applicant and the registrant, though separate legal entities, constitute a single source, or the applicant raises an equivalent argument. Examining attorneys should issue §2(d) refusals in any case where an analysis of the marks and the goods or services of the respective parties indicates a bar to registration under §2(d). The examining attorney should not attempt to analyze the relationship between an applicant and registrant until an applicant, in some form, relies on the nature of the relationship to obviate a refusal under §2(d).

Once an applicant has made this assertion, the question is whether the specific relationship is such that the two entities constitute a “single source,” so that there is no likelihood of confusion. The following guidelines may assist the examining attorney in resolving questions of likelihood of confusion when the marks are owned by related companies and the applicant asserts unity of control. (In many of these situations, the applicant may choose to attempt to overcome the §2(d) refusal by submitting a consent agreement or other conventional evidence to establish no likelihood of confusion.SeeTMEP §1207.01(d). Another way to overcome a §2(d) refusal is to assign all relevant registrations to the same party.)

1201.07(b)(i) When Either Applicant or Registrant Owns All of the Other Entity

If the applicant or the applicant’s attorney represents thateither the applicant or the registrant ownsall of the other entity, and there is no contradictory evidence, then the examining attorney should conclude that there is unity of control, a single source, and no likelihood of confusion. This would apply to an individual who owns all the stock of a corporation, and to a corporation and a wholly owned subsidiary or a subsidiary of a wholly owned subsidiary. In this circumstance, additional representations or declarations should generallynot be required, absent contradictory evidence.

1201.07(b)(ii) Joint Ownership or Ownership of Substantially All of the Other Entity

Either Applicant or Registrant Owns Substantially All of the Other Entity. InWella, the applicant provided a declaration stating that the applicant owned substantially all of the stock of the registrant and that the applicant thus controlled the activities of the registrant, including the selection, adoption, and use of trademarks.In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) , rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988). The Board concluded that this declaration alone, absent contradictory evidence, established unity of control, a single source, and no likelihood of confusion.Id. Therefore, ifeither the applicant or the registrant owns substantially all of the other entity and asserts control over the activities of the other entity, including its trademarks, and there is no contradictory evidence, the examining attorney should conclude that unity of control is present, that the entities constitute a single source, and that there is no likelihood of confusion under §2(d). In such a case, the applicant should generally provide these assertions in the form of an affidavit or declaration under37 C.F.R. §2.20.

Joint Ownership. The examining attorney may also accept an applicant’s assertion of unity of control when the applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and the applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership, if there is no contradictory evidence.

1201.07(b)(iii) When the Record Does Not Support a Presumption of Unity of Control

If neither the applicant nor the registrant owns all or substantially all of the other entity, and USPTO records do not show their joint ownership of the application or cited registration (seeTMEP §1201.07(b)(ii)), the applicant bears a more substantial burden to establish that unity of control is present. For instance, if both the applicant and the registrant are wholly owned by a third common parent, the applicant would have to provide detailed evidence to establish how one sister corporation controlled the trademark activities of the other to establish unity of control to support the contention that the sister corporations constitute a single source.See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987) ;Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473 (TTAB 1982) . Likewise, where an applicant and registrant have certain stockholders, directors, or officers in common, the applicant must demonstrate with detailed evidence or explanation how those relationships establish unity of control.See Pneutek, Inc. v. Scherr,211 USPQ 824 (TTAB 1981). The applicant’s evidence or explanation should generally be supported by an affidavit or a declaration under37 C.F.R. §2.20.

1201.07(b)(iv) When the Record Contradicts an Assertion of Unity of Control

In contrast to those circumstances where the relationship between the parties may support a presumption of unity of control or at least afford an applicant the opportunity to demonstrate unity of control, some relationships, by their very nature, contradict any claim that unity of control is present. For instance, if the relationship between the parties is that of licensor and licensee, unity of control will ordinarily not be present. The licensing relationship suggests ownership in one party and control by that one party over only the use of a specific mark or marks, but not over the operations or activities of the licensee generally. Thus, there is no unity of control and no basis for concluding that the two parties form a single source. Precisely because unity of control is absent, a licensing agreement is necessary. The licensing agreement enables the licensor/owner to control specific activities to protect its interests as the sole source or sponsor of the goods or services provided under the mark. Therefore, in these situations, it is most unlikely that an applicant could establish unity of control to overcome a §2(d) refusal.

1202 Use of Subject Matter as Trademark

In an application under §1 of the Act, the examining attorney must determine whether the subject matter for which registration is sought is used as a trademark by reviewing all evidence (e.g., the specimen and any promotional material) of record in the application.See In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (examining attorney should look primarily to the specimen to determine whether a designation would be perceived as a source indicator, but may also consider other evidence, if there is other evidence of record).

Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed inIn re The Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960) :

The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrablemerelybecause they do not happen to be descriptive of the goods or services with which they are associated.

Sections 1 and 2 of the Trademark Act,15 U.S.C. §§1051  and1052, require that the subject matter presented for registration be a “trademark.” Section 45 of the Act,15 U.S.C. §1127,  defines that term as follows:

The term “trademark” includes any word, name, symbol, or device, or any combination thereof–

  • (1) used by a person, or
  • (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Thus, §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, provide the statutory basis for refusal to register on the Principal Register subject matter that, due to its inherent nature or the manner in which it is used, does not function as a mark to identify and distinguish the applicant’s goods. The statutory basis for refusal of registration on the Supplemental Register of matter that does not function as a trademark is §§23(c) and 45 of the Trademark Act,15 U.S.C. §§1091(c)1127.

When the examining attorney refuses registration on the ground that the subject matter is not used as a trademark, the examining attorney must explain the specific reason for the conclusion that the subject matter is not used as a trademark. SeeTMEP §§1202.01–1202.19 for a discussion of situations in which it may be appropriate, depending on the circumstances, for the examining attorney to refuse registration on the ground that the proposed mark does not function as a trademark,e.g.,TMEP §§1202.01(trade names),1202.02(a)–1202.02(a)(viii) (functionality),1202.03–1202.03(g) (ornamentation),1202.04 (informational matter),1202.05–1202.05(i) (color marks),1202.06–1202.06(c) (goods in trade),1202.07–1202.07(b) (columns or sections of publications),1202.08–1202.08(f) (title of single creative work),1202.09–1202.09(b) (names of artists and authors),1202.11(background designs and shapes),1202.12 (varietal and cultivar names),1202.16 (model or grade designations),1202.17 (universal symbols),1202.18 (hashtags), and1202.19 (repeating patterns).

The presence of the letters “SM” or “TM” cannot transform an otherwise unregistrable designation into a registrable mark.In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) ;In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984) ;In re Minnetonka, Inc., 212 USPQ 772, 779 n.12 (TTAB 1981) .

The issue of whether a designation functions as a mark usually is tied to the use of the mark, as evidenced by the specimen. Therefore, unless the drawing and description of the mark are dispositive of the failure to function without the need to consider a specimen, generally, no refusal on this basis will be issued in an intent-to-use application under §1(b) of the Trademark Act,15 U.S.C. §1051(b),  until the applicant has submitted a specimen(s) with an allegation of use (i.e., either an amendment to allege use under15 U.S.C. §1051(c)  or a statement of use under15 U.S.C. §1051(d)).  However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the matter presented for registration does not function as a mark, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a failure to function refusal where the mark on its face, as shown on the drawing and described in the description, reflects a failure to function.See In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application).

SeeTMEP §§1301.02–1301.02(f) regarding use of subject matter as a service mark;TMEP §§1302-1305 regarding use of subject matter as a collective mark; andTMEP §§1306-1306.06(c) regarding use of subject matter as a certification mark.

1202.01 Refusal of Matter Used Solely as a Trade Name

The name of a business or company is a trade name. The Trademark Act distinguishes trade names from trademarks and service marks by definition. While a trademark is used to identify and distinguish the trademark owner’s goods from those manufactured or sold by others and to indicate the source of the goods, “trade name” and “commercial name” are defined in §45 of the Act,15 U.S.C. §1127,  as follows:

The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation.

The Trademark Act does not provide for registration of trade names.See In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985) (“[T]here was a clear intention by the Congress to draw a line between indicia which perform only trade name functions and indicia which perform or also perform the function of trademarks or service marks.”).

If the examining attorney determines that matter for which registration is requested is merely a trade name, registration must be refused both on the Principal Register and on the Supplemental Register. The statutory basis for refusal of trademark registration on the ground that the matter is used merely as a trade name is §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, and, in the case of matter sought to be registered for services, §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127.

A designation may function as both a trade name and a trademark or service mark.See In re Walker Process Equip. Inc., 233 F.2d 329, 332, 110 USPQ 41, 43 (C.C.P.A. 1956), aff’g 102 USPQ 443 (Comm’r Pats. 1954).

If subject matter presented for registration in an application is a trade name or part of a trade name, the examining attorney must determine whether it is also used as a trademark or service mark, by examining the specimen and other evidence of record in the application file.See In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994) (holding that DIAMOND HILL FARMS, as used on containers for goods, is a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others).

Whether matter that is a trade name (or a portion thereof) also performs the function of a trademark depends on the manner of its use and the probable impact of the use on customers.See In re Supply Guys, Inc., 86 USPQ2d 1488, 1491 (TTAB 2008) (finding that the use of trade name in “Ship From” section of Federal Express label where it serves as a return address does not demonstrate trademark use as the term appears where customers would look for the name of the party shipping the package); In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 168 (TTAB 1976) (“It is our opinion that the foregoing material reflects use by applicant of the notation ‘UNCLAIMED SALVAGE & FREIGHT CO.’ merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof.”); In re Lytle Eng'g & Mfg. Co., 125 USPQ 308 (TTAB 1960) (“‘LYTLE’ is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression.”).

The presence of an entity designator in a name sought to be registered and the proximity of an address are both factors to be considered in determining whether a proposed mark is merely a trade name.In re Univar Corp., 20 USPQ2d 1865, 1869 (TTAB 1991) (“[T]he mark “UNIVAR” independently projects a separate commercial impression, due to its presentation in a distinctively bolder, larger and different type of lettering and, in some instances, its additional use in a contrasting color, and thus does more than merely convey information about a corporate relationship.”);see also Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 727 (TTAB 1984) (“That the invoices . . . plainly show . . . service mark use is apparent from the fact that, not only do the words ‘BookCrafters, Inc.’ appear in larger letters and a different style of print than the address, but they are accompanied by a design feature (the circularly enclosed ends of two books).”).

A determination of whether matter serves solely as a trade name rather than as a mark requires consideration of the way the mark is used, as evidenced by the specimen(s). Therefore, no refusal on that ground will be issued in an intent-to-use application under §1(b) until the applicant has submitted specimen(s) of use in conjunction with an allegation of use under15 U.S.C. §1051(c) or15 U.S.C.  §1051(d).

1202.02 Registration of Trade Dress

Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act,15 U.S.C.  §1052.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209-210, 54 USPQ2d 1065, 1065-66 (2000). Trade dress originally included only the packaging or “dressing” of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.”Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992).

Thus, trade dress includes the design of a product (i.e., the product shape or configuration), the packaging in which a product is sold (i.e., the “dressing” of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product.Wal-Mart, 529 U.S. at 205, 54 USPQ2d at 1065 (design of children’s outfits constitutes product design);Two Pesos, 505 U.S. at 763, 23 USPQ2d at 1081 (interior of a restaurant is akin to product packaging);Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (color alone may be protectible);In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (flavor is analogous to product design and may be protectible unless it is functional). However, this is not an exhaustive list, because “almost anything at all that is capable of carrying meaning” may be used as a “symbol” or “device” and constitute trade dress that identifies the source or origin of a product.Qualitex, 514 U.S. at 162, 34 USPQ2d at 1162. When it is difficult to determine whether the proposed mark is product packaging or product design, such “ambiguous” trade dress is treated as product design.Wal-Mart, 529 U.S. at 215, 54 USPQ2d at 1066. Trade dress marks may be used in connection with goods and services.

In some cases, the nature of a potential trade dress mark may not be readily apparent. A determination of whether the mark constitutes trade dress must be informed by the application content, including the drawing, the description of the mark, the identification of goods or services, and the specimen, if any. If it remains unclear whether the proposed mark constitutes trade dress, the examining attorney may call or e-mail the applicant to clarify the nature of the mark, or issue an Office action requiring information regarding the nature of the mark, as well as any other necessary clarifications, such as a clear drawing and an accurate description of the mark.37 C.F.R. §2.61(b). The applicant’s response would then confirm whether the proposed mark is trade dress.

When an applicant applies to register a product design, product packaging, color, or other trade dress for goods or services, the examining attorney must separately consider two substantive issues: (1) functionality; and (2) distinctiveness.See TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29, 58 USPQ2d 1001, 1004-1005 (2001);Two Pesos, 505 U.S. at 775, 23 USPQ2d at 1086;In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1343, 213 USPQ 9, 17 (C.C.P.A. 1982) . SeeTMEP §§1202.02(a)–1202.02(a)(viii) regarding functionality and1202.02(b)–1202.02(b)(ii) and1212–1212.10 regarding distinctiveness. In many cases, a refusal of registration may be necessary on both grounds. In any application where a product design is refused because it is functional, registration must also be refused on the ground that the proposed mark is nondistinctive because product design is never inherently distinctive. However, since product packaging may be inherently distinctive, in an application where product packaging is refused as functional, registration should also be refused on the ground that the proposed mark is nondistinctive. Even if it is ultimately determined that the product packaging is not functional, the alternative basis for refusal may stand.

If a proposed trade dress mark is ultimately determined to be functional, claims and evidence that the mark has acquired distinctiveness or secondary meaning are irrelevant and registration will be refused.TrafFix , 532 U.S. at 33, 58 USPQ2d at 1007.

With respect to the functionality and distinctiveness issues in the specific context of color as a mark,seeTMEP §1202.05(a) and(b).

1202.02(a) Functionality of Trade Dress

In general terms, trade dress is functional, and cannot serve as a trademark, if a feature of that trade dress is "essential to the use or purpose of the article or if it affects the cost or quality of the article."Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995) (quotingInwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4, n.10 (1982)).

1202.02(a)(i) Statutory Basis for Functionality Refusal

Before October 30, 1998, there was no specific statutory reference to functionality as a ground for refusal, and functionality refusals were thus issued as failure-to-function refusals under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127.

Effective October 30, 1998, the Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069, amended the Trademark Act to expressly prohibit registration on either the Principal or Supplemental Register of functional matter:

  • Section 2(e)(5) of the Trademark Act,15 U.S.C. §1052(e)(5),  prohibits registration on the Principal Register of “matter that, as a whole, is functional.”
  • Section 2(f) of the Act,15 U.S.C. §1052(f),  provides that matter that, as a whole, is functional may not be registered even on a showing that it has become distinctive.
  • Section 23(c) of the Act,15 U.S.C. §1091(c),  provides that a mark that, as a whole, is functional may not be registered on the Supplemental Register.
  • Section 14(3) of the Act,15 U.S.C. §1064(3),  lists functionality as a ground that can be raised in a cancellation proceeding more than five years after the date of registration.
  • Section 33(b)(8) of the Act,15 U.S.C. §1115(b)(8),  lists functionality as a statutory defense to infringement in a suit involving an incontestable registration.

These amendments codified case law and the longstanding USPTO practice of refusing registration of functional matter.

1202.02(a)(ii) Purpose of Functionality Doctrine

The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining a proper balance between trademark law and patent law. As the Supreme Court explained, inQualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995):

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. Sections  154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others – thus encouraging advances in product design and manufacture. InTrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the Supreme Court reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness.

Thus, even when the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons stated.Id.

1202.02(a)(iii) Background and Definitions
1202.02(a)(iii)(A) Functionality

Functional matter cannot be protected as a trademark.15 U.S.C. §§1052(e)(5)  and(f),1064(3),1091(c), and1115(b). A feature is functional as a matter of law if it is “essential to the use or purpose of the article or if it affects the cost or quality of the article.”TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001);Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995);Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4, n.10 (1982).

While some courts had developed a definition of functionality that focused solely on “competitive need” – thus finding a particular product feature functional only if competitors needed to copy that design in order to compete effectively – the Supreme Court held that this “was incorrect as a comprehensive definition” of functionality.TrafFix, 532 U.S. at 33, 58 USPQ2d at 1006. The Court emphasized that where a product feature meets the traditional functionality definition – that is, it is essential to the use or purpose of the product or affects its cost or quality – then the feature is functional, regardless of the availability to competitors of other alternatives.Id.;see also Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) (“Rather, we conclude that the [TrafFix] Court merely noted that once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available” (footnote omitted).)

However, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need, although not determinative, remains a significant consideration in functionality determinations.Id. at 1278, 1428.

The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness.See TrafFix, 532 U.S. at 29-33, 58 USPQ2d at 1005-1007;see also In re Controls Corp. of Am., 46 USPQ2d 1308, 1312 (TTAB 1998) (rejecting applicant’s claim that “registration on the Supplemental Register of a de jure functional configuration is permissible if the design is ‘capable’ of distinguishing applicant’s goods”). Thus, if an applicant responds to a functionality refusal under §2(e)(5),15 U.S.C. §1052(e)(5),  by submitting an amendment seeking registration on the Supplemental Register that is not made in the alternative, such an amendment does not introduce a new issue warranting a nonfinal Office action.SeeTMEP §714.05(a)(i). Instead, the functionality refusal must be maintained and made final, if appropriate, under §§23(c) and 45,15 U.S.C. §§1091(c),1127, as that is the statutory authority governing a functionality refusal on the Supplemental Register. Additionally, for functionality refusals, the associated nondistinctiveness refusal must be withdrawn.See In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015) .

SeeTMEP §§1202.02(a)(v)–1202.02(a)(v)(D) regarding evidentiary considerations pertaining to functionality refusals.

1202.02(a)(iii)(B) “De Jure” and “De Facto” Functionality

Prior to 2002, the USPTO used the terms “de facto” and “de jure” in assessing whether “subject matter” (usually a product feature or the configuration of the goods) presented for registration was functional. This distinction originated with the Court of Customs and Patent Appeals’ decision inIn re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982) , which was discussed by the Federal Circuit inValu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002):

Our decisions distinguishde facto functional features, which may be entitled to trademark protection, fromde jure functional features, which are not. ‘In essence,de factofunctional means that the design of a product has a function, i.e., a bottle of any design holds fluid.’In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984).De facto functionality does not necessarily defeat registrability.Morton-Norwich, 671 F.2d at 1337, 213 USPQ at 13 (A design that isde factofunctional, i.e., ‘functional’ in the lay sense . . .may be legally recognized as an indication of source.’).De jure functionality means that the product has a particular shape ‘because it works better in this shape.’Smith, 734 F.2d at 1484, 222 USPQ at 3.

However, in three Supreme Court decisions involving functionality –TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001),Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065 (2000), andQualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) – the Court did not use the “de facto/de jure” distinction. Nor were these terms used when the Trademark Act was amended to expressly prohibit registration of matter that is “functional.” Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069 (1998). Accordingly, in general, examining attorneys no longer make this distinction in Office actions that refuse registration based on functionality.

De facto functionality is not a ground for refusal.In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1282 (TTAB 2000) ;In re Parkway Mach. Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB 1999) .

1202.02(a)(iv) Burden of Proof in Functionality Determinations

The examining attorney must establish a prima facie case that the proposed trade dress mark sought to be registered is functional in order to make and maintain the §2(e)(5) functionality refusal.See In re Becton, Dickinson & Co., 675 F.3d 1368, 1374, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012);Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019, 1025, 224 USPQ 625, 629 (Fed. Cir. 1985);In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). To do so, the examining attorney must not only examine the application content (i.e., the drawing, the description of the mark, the identification of goods or services, and the specimen, if any), but also conduct independent research to obtain evidentiary support for the refusal. In applications where there is reason to believe that the proposed mark may be functional, but the evidence is lacking to issue the §2(e)(5) refusal in the first Office action, a request for information pursuant to37 C.F.R. §2.61(b) must be issued to obtain information from the applicant so that an informed decision about the validity of the functionality refusal can be made.

The burden then shifts to the applicant to present “competent evidence” to rebut the examining attorney’s prima facie case of functionality.See In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1374;Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d at 1025, 224 USPQ at 629;In re R.M. Smith, Inc., 734 F.2d at 1484, 222 USPQ at 3; In re Bio-Medicus Inc., 31 USPQ2d 1254, 1257 n.5 (TTAB 1993). The “competent evidence” standard requires proof by preponderant evidence.In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1377.

The functionality determination is a question of fact, and depends on the totality of the evidence presented in each particular case.In re Becton, Dickinson & Co., 675 F.3d at 1372, 102 USPQ2d at 1375;Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273, 61 USPQ2d 1422, 1424 (Fed. Cir. 2002);In re Udor U.S.A., Inc., 89 USPQ2d 1978, 1979 (TTAB 2009) ;In re Caterpillar Inc., 43 USPQ2d 1335, 1338 (TTAB 1997) . While there is no set amount of evidence that an examining attorney must present to establish a prima facie case of functionality, it is clear that there must be evidentiary support for the refusal in the record.See, e.g., In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1342, 213 USPQ 9, 16-17 (C.C.P.A. 1982) (admonishing both the examining attorney and the Board for failing to support the functionality determination with even “one iota of evidence”).

If the design sought to be registered as a mark is the subject of a utility patent that discloses the feature’s utilitarian advantages, the applicant bears an especially “heavy burden of showing that the feature is not functional” and “ overcoming the strong evidentiary inference of functionality.”TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30, 58 USPQ2d 1001, 1005 (2001); Udor U.S.A., Inc., 89 USPQ2d at 1979-80;seeTMEP §1202.02(a)(v)(A).

1202.02(a)(v) Evidence and Considerations Regarding Functionality Determinations

A determination of functionality normally involves consideration of one or more of the following factors, commonly known as the “Morton-Norwich factors”:

  • (1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • (2) advertising by the applicant that touts the utilitarian advantages of the design;
  • (3) facts pertaining to the availability of alternative designs; and
  • (4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012);In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982) .

Since relevant technical information is often more readily available to an applicant, the applicant will often be the source of most of the evidence relied upon by the examining attorney in establishing a prima facie case of functionality in an ex parte case.In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982);In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1989) . Therefore, in an application for a trade dress mark, when there is reason to believe that the proposed mark may be functional, the examining attorney must perform a search for evidence to support theMorton-Norwich factors. In applications where there is reason to believe that the proposed mark may be functional, the first Office action must include a request for information under37 C.F.R. §2.61(b), requiring the applicant to provide information necessary to permit an informed determination concerning the functionality of the proposed mark.See In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (finding that registration is properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information). Such a request should be issued for most product design marks.

Accordingly, the examining attorney’s request for information should pertain to theMorton-Norwichfactors and: (1) ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s); (2) ask the applicant to provide any available advertising, promotional, or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark; (3) inquire of the applicant whether alternative designs are available; and (4) inquire whether the features sought to be registered make the product easier or cheaper to manufacture. The examining attorney should examine the specimen(s) for information relevant to theMorton-Norwich factors, and conduct independent research of applicant’s and competitors’ websites, industry practice and standards, and legal databases such as LexisNexis®. The examining attorney may also consult USPTO patent records.

It is not necessary to consider all theMorton-Norwich factors in every case. The Supreme Court held that “[w]here the design is functional under theInwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.”TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 58 USPQ2d 1001, 1006 (2001);see alsoIn re Becton, Dickinson & Co., 675 F.3d at 1376, 102 USPQ2d at 1378 (stating that “since the patent and advertising evidence established functionality, the Board did not need to analyze whether alternative designs exist”);Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1499-1500 (TTAB 2017) (finding the mark as a whole primarily functional because the overall appearance of applicant’s engine configuration was essential to the use or purpose of the engine and affects its quality and the totality of the record showed the functional features outweighed the decorative and non-functional aspects);In re Loggerhead Tools, LLC,119 USPQ2d 1429, 1434 (TTAB 2016) (finding that the first two Morton-Norwich factors established that applicant’s applied-for mark is functional, before considering the remaining factors). Moreover, there is no requirement that all four of theMorton-Norwich factors weigh in favor of functionality to support a refusal.See Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) (“once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs”);In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (finding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which imparts a flavor of peppermint, can improve the effectiveness of sublingual nitroglycerin spray); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (affirming the functionality refusal of “a round disk head on a sprayer nozzle” where the third and fourth factors showed that applicant’s competitors manufactured and marketed spray nozzles with similar features, the shape was preferred in the industry, and it appeared efficient, economical, and advantageous, even though applicant’s utility patent and advertising did not weigh in favor of functionality);In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (holding orange flavor for pharmaceuticals to be functional based on applicant’s touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product);In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (finding that since there was no utility patent, and no evidence that applicant’s guitar configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board’s decision).

Evidence that the proposed mark is the subject of a utility patent that discloses the utilitarian advantages of the configuration at issue can be sufficient in itself to support a functionality refusal.TrafFix, 532 U.S. at 33, 58 USPQ2d at 1005 (“A utility patent is strong evidence that the features therein claimed are functional.”);Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1519 (TTAB 2017) (“The issue is whether anything in the patent, its specification, or statements made in prosecution disclose the functionality of the marks. Here, they clearly do.”);In re Change Wind Corp., 123 USPQ2d 1453, 1460 (TTAB 2017) (“[T]he utility patent demonstrates the utilitarian advantages of . . . the design at issue, and for this reason, we find the product configuration functional.”);In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006) (“[W]e find that applicant's expired utility patent, which specifically discloses and claims the utilitarian advantages of applicant's earplug configuration and which clearly shows that the shape at issue ‘affects the . . . quality of the device,’ is a sufficient basis in itself for finding that the configuration is functional, given the strong weight to be accorded such patent evidence underTrafFix.”). SeeTMEP §1202.02(a)(v)(A) for further discussion of utility patents.

It is important that the functionality inquiry focus on the utility of the feature or combination of features claimed as protectable trade dress.Morton-Norwich, 671 F.2d at 1338, 213 USPQ at 13. Generally, dissecting the design into its individual features and analyzing the utility of each separate feature does not establish that the overall design is functional.See15 U.S.C.  §1052(e)(5);Teledyne, 696 F.2d at 971, 217 USPQ at 11. However, it is sometimes helpful to analyze the design from the standpoint of its various features.SeeElmer v. ICC Fabricating Inc., 67 F.3d 1571, 1579-80, 36 USPQ2d 1417, 1422-23 (Fed. Cir. 1995) (rejecting the argument that the combination of individually functional features in the configuration resulted in an overall nonfunctional product design);In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 2 (Fed. Cir. 1984) (affirming the functionality determination, where the Board had initially considered the six individual features of the design, and then had concluded that the design as a whole was functional);In re Change Wind Corp., 123 USPQ2d at 1456-61 (finding product configuration functional based on the functional role of the components claimed in applicant’s drawing of the mark);In re Controls Corp. of Am., 46 USPQ2d 1308, 1312 (TTAB 1998) (finding the entire configuration at issue functional because it consisted of several individual features, each of which was functional in nature).

Where the evidence shows that the overall design is functional, the inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result.SeeIn re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376;Textron, Inc. v. U.S. Int’l Trade Comm'n, 753 F.2d 1019, 1025, 224 USPQ 625, 628-29 (Fed. Cir. 1985);In re Vico Prods. Mfg. Co., 229 USPQ 364, 368 (TTAB 1985) .

In the limited circumstances where a proposed trade dress mark is not functional overall, but contains insignificant elements that are functional, the examining attorney must issue a requirement for an amended drawing and allow applicant to remove or delete the functional elements from the drawing or depict them in broken or dotted lines to indicate that they are not features of the mark. SeeTMEP §1202.02(c)(i) regarding drawings in trade dress applications.

The question of whether a product feature is “functional” should not be confused with whether that product feature performs a “function” (i.e., it isde facto functional) or “fails to function” as a trademark. SeeTMEP §1202.02(a)(iii)(B)regardingde facto functionality. Usually, most objects perform a function, for example, a bottle holds liquid and a lamp provides light. However, only certain configurations that allow an object to work better are functional under §2(e)(5). As theMorton-Norwich court noted, "it is the 'utilitarian'design of a 'utilitarian'objectwith which we are concerned." 671 F.2d at 1338, 213 USPQ at 14. Similarly, a product feature that is deemed not functional under §2(e)(5) may lack distinctiveness such that it fails to function as a trademark under §§1, 2, and 45 of the Trademark Act. SeeTMEP §§1202.02(b)–1202.02(b)(ii) for distinctiveness of trade dress.

1202.02(a)(v)(A) Utility Patents and Design Patents

Utility Patents

Utility patents cover the invention or discovery of a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 35 U.S.C. §101.

InTrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001), the Supreme Court resolved a circuit split regarding the proper weight to be afforded a utility patent in the functionality determination, stating:

A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

See In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) (utility patent supported functionality of closure cap for blood-collection tubes);In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (shape of loudspeaker system enclosure found functional, per patent disclosure containing evidence of functionality);In re Change Wind Corp., 123 USPQ2d 1453, 1459-60 (TTAB 2017) (utility patent disclosed functional role of components claimed in configuration of wind turbines);In re Dietrich, 91 USPQ2d 1622 (TTAB 2009) (patent evidence supported bicycle wheel configuration was functional);In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009)(functionality of spray nozzle head not supported by patent claims);In re Visual Commc’ns Co., 51 USPQ2d 1141 (TTAB 1999) (patent disclosed functionality of light-emitting diode housings);In re Edward Ski Prods., Inc., 49 USPQ2d 2001 (TTAB 1999) (ski mask found functional based on patent evidence);In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997) (patent disclosures supported functionality of elevated sprocket configuration).

The Court inTrafFixwent on to hold that where the evidence includes a utility patent that claims the product features at issue, it is unnecessary to consider evidence relating to the availability of alternative designs:

There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works. Other designs need not be attempted.

TrafFix, 532 U.S. at 33-34, 58 USPQ2d at 1007 (citation omitted).

Therefore, when presented with facts similar to those inTrafFix (i.e., where there is a utility patent establishing the utilitarian nature of the product design at issue), the examining attorney may properly issue a final functionality refusal based primarily on the utility patent.In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006). Where functionality appears to be an issue, in the first Office action, the examining attorney should ask the applicant to provide copies of any active, pending, or expired patent(s), and any pending or abandoned patent application(s).37 C.F.R. §2.61(b);see Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1279, 61 USPQ2d 1422, 1429 (Fed. Cir. 2002) (“We agree with the Board that an abandoned patent application should be considered under the firstMorton-Norwich factor, because an applied-for utility patent that never issued has evidentiary significance for the statements and claims made in the patent application concerning the utilitarian advantages, just as an issued patent has evidentiary significance.”).

It is not necessary that the utility patent be owned by the applicant; a third-party utility patent is also relevant to the functionality determination, if the patent claims the features in the product design sought to be registered.SeeAS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1834-35 (TTAB 2013);In re Mars, Inc., 105 USPQ2d 1859, 1861 (TTAB 2013);In re Dietrich, 91 USPQ2d at 1627;In re Am. Nat’l Can Co., 41 USPQ2d 1841, 1843 (TTAB 1997) ;In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997) ;In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) . In addition, a third-party patent may include other evidence directly related to the functionality of a proposed mark. InPohl-Boskamp GmbH & Co., the applicant sought to register the flavor of peppermint for use in connection with pharmaceutical preparations of nitroglycerin in the form of a lingual spray. The examining attorney made of record a third-party patent that described the results of two studies demonstrating that peppermint oil had therapeutic properties in the applicant’s field of goods.In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1046-48 (TTAB 2013) . Therefore, the examining attorney may also consult patent databases, including the USPTO’s patent records, to see if utility patents owned by applicant’s competitors disclose the functional advantages of the product design that the applicant seeks to register.

It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does, the utility patent is strong evidence that the particular product features claimed as trade dress are functional. But the specification and/or drawings in the patent may also provide strong evidence, even if the feature is not claimed as part of the invention.See, e.g.,In re Becton, Dickinson and Co., 675 F.3d at 1375, 102 USPQ2d at 1377 (there is no requirement “that a patent claim the exact configuration for which trademark protection is sought in order to undermine an applicant's assertion that an applied-for mark is not de jure functional. Indeed, . . . statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality.”) (citation omitted). In contrast, if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely.TrafFix, 532 U.S. at 34, 58 USPQ2d at 1007 (noting that where a manufacturer seeks to protect arbitrary, incidental, or ornamental features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, functionality will not be established if the manufacturer can prove that those aspects do not serve a purpose within the terms of utility patent);Grote Indus, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1206 (TTAB 2018) (finding that utility patent did not show that the six-diode design of vehicle lights was essential to their use or purpose);In re Udor U.S.A., Inc., 89 USPQ2d 1978, 1980-82 (TTAB 2009) (finding that where the patent’s language and a detailed comparison between the identified features of the patent drawing with the visible features of the trademark drawing established that the patent claims involved components neither shown nor described in the trademark design, the utility patent did not support a finding of functionality);see also Black & Decker Inc. v. Hoover Serv. Ctr., 886 F.2d 1285, 12 USPQ2d 1250 (Fed. Cir. 1989) (lower court’s reliance on and misinterpretation of a patent not in evidence as support for a finding of functionality was clear error);In re Zippo Mfg. Co., 50 USPQ2d 1852 (TTAB 1999) (configuration of cigarette lighter not functional since patent covered slightly different exterior features and claimed internal mechanism);In re Weber-Stephen Prods. Co., 3 USPQ2d 1659 (TTAB 1987) (patent evidence did not show utilitarian advantages of barbeque grill design sought to be registered). Where a utility patent claims more than what is sought to be registered, this fact does not establish the nonfunctionality of the product design, if the patent shows that the feature claimed as a trademark is an essential or integral part of the invention and has utilitarian advantages.Cf. TrafFix, 532 U.S. at 31, 58 USPQ2d at 1006-07 (nothing in the applied-for dual-spring traffic sign design pointed to arbitrary features).

The examining attorney should consider both the numbered claims and the disclosures in the written description, drawings, and abstract of the patent. InLeight, the Board found functionality based on both the claims and the disclosure. The Board rejected the applicant’s argument that the examining attorney erred in looking to the claims made in applicant’s patent, noting that the Supreme Court inTrafFix repeatedly referred to a patent’s claims as evidence of functionality.Leight,80 USPQ2d at 1510-11. The examining attorney should also consider other evidence described in a patent that is relevant to the functionality of the mark at issue. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1046-47;see alsoIn re Becton, Dickinson & Co.,675 F. 3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) (“[S]tatements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality.”);In re Loggerhead Tools, LLC,119 USPQ2d 1429, 1431-32 (TTAB 2016) (indicating that evidence of functionality in a patent is not limited to language in the claims themselves).

Statements regarding utilitarian advantages of the design made in the course of the prosecution of the patent application can also be very strong evidence of functionality.TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006 (“These statements [regarding specific functional advantages of the product design] made in the patent applications and in the course of procuring the patents demonstrate the functionality of the design. MDI does not assert that any of these representations are mistaken or inaccurate, and this is further strong evidence of the functionality of the dual-spring design.”);M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001) .

The fact that the proposed mark isnot the subject of a utility patent does not establish that a feature of the proposed mark is nonfunctional.TrafFix, 532 U.S. at 32, 35, 58 USPQ2d at 1006-07;In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.3, (TTAB 2001) .

Design Patents

Design patents cover the invention of a new, original, and ornamental design for an article of manufacture. 35 U.S.C. §171.  A design patent is a factor that weighs against a finding of functionality, because design patents by definition protect only ornamental and nonfunctional features. However, ownership of a design patent does not in itself establish that a product feature is nonfunctional, and can be outweighed by other evidence supporting the functionality determination.SeeIn re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377;In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984);Caterpillar, 43 USPQ2d at 1339;Am. Nat’l Can Co., 41 USPQ2d at 1843;In re Witco Corp., 14 USPQ2d 1557, 1559 (TTAB 1989);see alsoIn re Loggerhead Tools, LLC,119 USPQ2d 1429, 1432-33 (TTAB 2016) (“absent identity between the design patent and proposed mark . . . , similar design patents lack sufficient evidentiary value” to overcome other evidence showing that the proposed mark was functional, especially in view of a utility patent that disclosed the utilitarian advantages of the claimed feature) (citingBecton, Dickinson, 375 F. 3d at 1375, 102 USPQ2d at 1377).

1202.02(a)(v)(B) Advertising, Promotional, or Explanatory Material in Functionality Determinations

The applicant’s own advertising touting the utilitarian aspects of its product design or product packaging is often strong evidence supporting a functionality refusal.See, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76, 102 USPQ2d 1372, 1377-78 (Fed. Cir. 2012);In re Loggerhead Tools, LLC,119 USPQ2d 1429, 1433 (TTAB 2016);AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829 (TTAB 2013);Kistner Concrete Prods., Inc. v. Contech Arch Techs., Inc., 97 USPQ2d 1912 (TTAB 2011) ;Mag Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d 1701 (TTAB 2010);In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006);In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) ;M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001);In re Visual Commc’ns Co., 51 USPQ2d 1141 (TTAB 1999) ;In re Edward Ski Prods., Inc., 49 USPQ2d 2001 (TTAB 1999) ;In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997) ;In re Bio-Medicus Inc., 31 USPQ2d 1254 (TTAB 1993);In re Witco Corp., 14 USPQ2d 1557 (TTAB 1989).

An applicant will often assert that statements in its promotional materials touting the utilitarian advantages of the product feature are mere “puffery” and, thus, entitled to little weight in the functionality analysis. However, where the advertising statements clearly emphasize specific utilitarian features of the design claimed as a mark, the Board will reject such assertions of “puffing.”See, e.g., Gibson Guitar, 61 USPQ2d at 1951;Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705, 1716-17 (TTAB 1998) ;Bio-Medicus, 31 USPQ2d at 1260 (TTAB 1993);Witco, 14 USPQ2d at 1559-61 (TTAB 1989).

InGibson Guitar, the Board found the design of a guitar body to be functional, noting that applicant’s literature clearly indicated that the shape of applicant’s guitar produced a better musical sound. Applicant’s advertisements stated that “[t]his unique body shape creates a sound which is much more balanced and less ‘muddy’ than other ordinary dreadnought acoustics.” 61 USPQ2d at 1951.

Where functionality appears to be an issue, in the first Office action, the examining attorney must ask the applicant to provide any available advertising, promotional, or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark.37 C.F.R. §2.61(b). The examining attorney should also examine the specimen(s), and check to see if the applicant has a website on which the product is advertised or described.

In addition, examining attorney may check the websites of applicant’s competitors for evidence of functionality.See In re Van Valkenburgh, 97 USPQ2d 1757, 1762-63, (TTAB 2011) ;Gibson Guitar, 61 USPQ2d at 1951. Industry and trade publications and computer databases may also be consulted to determine whether others offer similar designs and features or have written about the applicant’s design and its functional features or characteristics. InGibson Guitar, the record included an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant’s configuration, touting the acoustical advantages of the shape of the guitar. 61 USPQ2d at 1951.

1202.02(a)(v)(C) Availability of Alternative Designs in Functionality Determinations

An applicant attempting to rebut a prima facie case of functionality will often submit evidence of alternative designs to demonstrate that there is no “competitive need” in the industry for the applicant’s particular product design.SeeTMEP §1202.02(a)(iii)(A). In order to be probative, the alternative design evidence must pertain to the same category of goods as the applicant’s goods.See, e.g., In re Zippo Mfg. Co., 50 USPQ2d 1852, 1854 (TTAB 1999) ;In re EBSCO Indus. Inc., 41 USPQ2d 1917, 1920 (TTAB 1997) .

However, inTrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), the Supreme Court clearly indicated that if the record shows that a design is essential to the use or purpose of a product, or if it affects the cost or quality of the product, it is unnecessary to consider whether there is a competitive need for the product feature. The Court explained:

[W]e have said “in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Expanding upon the meaning of this phrase, we have observed that a functional feature is one the “exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.” The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is “whether the particular product configuration is a competitive necessity.” . . . This was incorrect as a comprehensive definition. As explained inQualitex, supra, andInwood, supra, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device . . .Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.

* * *

There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means thatcompetitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works.Other designs need not be attempted (emphasis added).

TrafFix, 532 U.S. at 32-34, 58 USPQ2d at 1006-1007 (citations and additional internal quotations omitted);see also In re Becton, Dickinson & Co., 675 F.3d 1368, 1376, 102 USPQ2d 1372, 1378 (Fed. Cir. 2012) (quotingValu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002)) (“[I]f functionality is found based on other considerations, there is ‘no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.’”).

Nonetheless, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need generally remains an important factor in a functionality determination.SeeValu Eng'g, Inc., 278 F.3d at 1277, 61 USPQ2d at 1428 (“[I]n determining ‘functionality,’ the Board must assess the effect registration of a mark would have on competition.”).

Accordingly, the examining attorney should request information about alternative designs in the initial Office action, pursuant to37 C.F.R. §2.61(b), i.e., inquire whether alternative designs are available for the feature embodied in the proposed mark and whether the alternatives are more costly to produce.

Where the evidence indicates that the applicant’s configuration is the best or one of a few superior designs available, this evidence will strongly support a finding of functionality.See, e.g., In re Dietrich, 91 USPQ2d 1622, 1636 (TTAB 2009) (“[T]he question is not whether there are alternative designs that perform the same basic function, but whether the available designs work ‘equally well.’”) (citation omitted);In re N.V. Organon, 79 USPQ2d 1639, 1645-46 (TTAB 2006) (concluding that, since the record showed that orange flavor is one of the most popular flavors for medicine, it cannot be said that there are true or significant number of alternatives);In re Gibson Guitar Corp., 61 USPQ2d 1948, 1951 (TTAB 2001) (finding that applicant had not shown there were alternative guitar shapes that could produce the same sound as applicant’s configuration, and noting that the record contained an advertisement obtained from the website of a competitor, whose guitar appeared to be identical in shape to applicant’s configuration, which stated that the shape of the guitar produces a better sound).

A configuration of a product or its packaging that embodies a superior design feature and provides a competitive advantage to the user is functional. InN.V. Organon, 79 USPQ2d at 1648-49, the Board found that by masking the unpleasant taste of the medicinal ingredients in pharmaceuticals, “flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade. To allow registration of ‘an orange flavor’ as a trademark would give applicant potentially perpetual protection for this flavor, resulting in hindrance of competition.”

Functionality may be established by a single competitively significant application in the recited identification of goods, even if there is no anticompetitive effect in other areas of use, since competitors in that single area could be adversely affected.Valu Eng'g, 278 F.3d at 1278, 61 USPQ2d at 1428 (“[I]f the Board identifiesanycompetitively significant single use in the recited identification of goods for which the mark as a whole is functional, the Board should deny registration.”).

If evidence shows the existence of a number of functionally equivalent alternative designs that work “equally well,” such that competitors do not need applicant’s design to compete effectively, this factor may not support functionality.Dietrich, 91 USPQ2d at 1636, citingValu Eng'g, 278 F.3d at 1276, 61 USPQ2d at 1427. However, once deemed functional under otherMorton-Norwich factors, the claimed trade dress cannot be registered merely because there are functionally equivalent alternative designs.Valu Eng'g, 278 F.3d at 1276, 61 USPQ2d at 1427. Existence of comparable alternative designs does not transform a functional design into a nonfunctional design.Id.

1202.02(a)(v)(D) Ease or Economy of Manufacture in Functionality Determinations

A product feature is functional if it is essential to the use or purpose of the productor if it affects the cost or quality of the product.Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982) (emphasis added). Therefore, a showing that a product design or product packaging results from a comparatively simple or inexpensive method of manufacture will support a finding that the claimed trade dress is functional.

In many cases, there is little or no evidence pertaining to this factor. However, the examining attorney should still ask the applicant for information, under37 C.F.R. §2.61(b), as to whether the subject design makes the product simpler or less costly to manufacture, since evidence on this issue weighs strongly in favor of a finding of functionality.See, e.g., TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001);In re Virshup, 42 USPQ2d 1403, 1407 (TTAB 1997) . Statements pertaining to the cost or ease of manufacture may sometimes also be found in informational or advertising materials.See M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant’s design results in reduced installation costs found to be evidence of the functionality of applicant’s configurations of metal ventilating ducts and vents for tile or concrete roofs).

While evidence showing that a product feature results from a comparatively simple or inexpensive method of manufacture supports a finding that the design is functional, the opposite is not necessarily the case. That is, assertions by the applicant that its design is more expensive or more difficult to make, or that the design does not affect the cost, will not establish that the configuration is not functional.In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009) (“Even at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially, as claimed in the patents, a superior quality wheel.”);In re N.V. Organon, 79 USPQ2d 1639, 1646 (TTAB 2006) . Designs that work better or serve a more useful purpose may, indeed, be more expensive and difficult to produce.

1202.02(a)(vi) Aesthetic Functionality

“Aesthetic functionality” refers to situations where the feature may not provide a truly utilitarian advantage in terms of product performance, but provides other competitive advantages. For example, inBrunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531, 1533, 32 USPQ2d 1120, 1122, 1124 (Fed. Cir. 1994),cert. denied, 514 U.S. 1050 (1995), the Federal Circuit affirmed the Board’s determination that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages, i.e., ease of coordination with a variety of boat colors and reduction in the apparent size of the engines.

The concept of “aesthetic functionality” (as opposed to “utilitarian functionality”) has for many years been the subject of much confusion. While the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit) appeared to reject the doctrine of aesthetic functionality inIn re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 399-401 (C.C.P.A. 1982) , the Supreme Court later referred to aesthetic functionality as a valid legal concept inTrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). The confusion regarding aesthetic functionality stems in part from widespread misuse of the term “aesthetic functionality” in cases involving ornamentation issues, with some courts having mistakenly expanded the category of “functional” marks to include matter that is solely ornamental, essentially on the theory that such matter serves an “aesthetic function” or “ornamentation function.” It is this incorrect use of the term “aesthetic functionality” in connection with ornamentation cases that was rejected by the Court of Customs and Patent Appeals.See In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 397, 399-401 (C.C.P.A. 1982) (majority opinion and Rich, J., concurring) (holding, in a case involving features of toy dolls, that the Board had improperly “intermingled the concepts of utilitarian functionality and what has been termed ‘aesthetic functionality;’” and rejecting the concept of aesthetic functionality where it is used as a substitute for “the more traditional source identification principles of trademark law,” such as the ornamentation and functionality doctrines).

Where the issue presented is whether the proposed mark is ornamental in nature, it is improper to refer to “aesthetic functionality,” because the doctrine of “functionality” is inapplicable to such cases. The proper refusal is that the matter is ornamental and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127. SeeTMEP §§1202.03-1202.03(g) regarding ornamentation.

The Supreme Court’s use of the term “aesthetic functionality” in theTrafFix case appears limited to cases where the issue is one of actual functionality, but where the nature of the proposed mark makes it difficult to evaluate the functionality issue from a purely utilitarian standpoint. This is the case with color marks and product features that enhance the attractiveness of the product. The color or feature does not normally give the product a truly utilitarian advantage (in terms of making the product actually perform better), but may still be found to be functional because it provides other real and significant competitive advantages and, thus, should remain in the public domain.SeeQualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use “would put competitors at a significant non-reputation-related disadvantage,” even where the color was not functional in the utilitarian sense).

InM-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001) , the Board considered the proper use of the aesthetic functionality doctrine in connection with product designs for metal ventilating ducts and vents for tile or concrete roofs:

This case seems to involve elements of both utilitarian and aesthetic functionality. Here, for example, there is evidence of utility in applicant’s patent application, as well as statements touting the superiority of applicant’s design in applicant’s promotional literature, and statements that applicant’s design results in reduced costs of installation. On the other hand, there is no question that applicant’s roof designs which match the appearance of surrounding roof tiles are more pleasing in appearance because the venting tiles in each case are unobtrusive.

Citing extensively from theTrafFix, Qualitex, and Brunswick cases, the Board concluded that the product designs were functional for a combination of utilitarian and aesthetic reasons.Id. at 1097.

Note that this type of functionality determination – while employed in connection with a normally “aesthetic” feature such as color – is a proper use of the functionality doctrine, necessitating a §2(e)(5) refusal where the evidence establishes that a color or other matter at issue provides identifiable competitive advantages and, thus, should remain in the public domain. InIn re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784 (TTAB 2013) , for example, the record included evidence reflecting that, in the floral industry, color has significance and communicates particular messages (e.g., elegance, bereavement, Halloween), which extend to floral packaging. The Board found, therefore, that the examining attorney had demonstrated a competitive need for others in the industry to use black in connection with floral arrangements and packaging therefor and concluded that the proposed mark was functional under §2(e)(5). This is the opposite of an ornamentation refusal, where the matter at issue serves no identifiable purpose other than that of pure decoration.

Generally speaking, examining attorneys should exercise caution in the use of the term “aesthetic functionality,” in light of the confusion that historically has surrounded this issue. In most situations, reference to aesthetic functionality will be unnecessary, since a determination that the matter sought to be registered is purely ornamental in nature will result in an ornamentation refusal under §§1, 2, and 45 of the Trademark Act, and a determination that the matter sought to be registered is functional will result in a functionality refusal under §2(e)(5). Use of the term “aesthetic functionality” may be appropriate in limited circumstances where the proposed mark presents issues similar to those involved in theFlorists’ Transworld Delivery,M-5 Steel, andBrunswick cases discussed above – i.e., where the issue is one of true functionality under §2(e)(5), but where the nature of the mark makes the functionality determination turn on evidence of particular competitive advantages that are not necessarily categorized as “utilitarian” in nature. Any such use of the term “aesthetic functionality” should be closely tied to a discussion of specific competitive advantages resulting from use of the proposed mark at issue, so that it is clear that the refusal is properly based on the functionality doctrine and not on an incorrect use of “aesthetic functionality” to mean ornamentation.

SeeTMEP §§1202.05 and1202.05(b) for additional discussion and case references regarding the functionality issue in connection with color marks.

1202.02(a)(vii) Functionality and Service Marks

Although rare in the context of service mark applications, examining attorneys are not foreclosed from refusing registration based on functionality. InDuramax Marine, LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780, 1793 (TTAB 2006) , the Board held that a two-dimensional design of a marine heat exchanger (commonly known as a “keel cooler”), was not functional for “manufacture of marine heat exchangers to the order and specification of others.” It found “a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself . . . and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services;” and stated that “[t]he inquiry regarding functionality may need to be decidedly different” in cases involving a service mark.

The record showed that the keel cooler depicted in the proposed mark was “identical, or nearly so” to the depiction of a keel cooler in applicant’s expired patent; that opposer and at least one other party had been marketing keel coolers very similar to the proposed mark; and that the design sought to be registered appeared in applicant’s catalog of pre-manufactured keel coolers.Id. at 1786. The Board framed the question at issue as “whether any manufacturer of the formerly patented item should be free to utilize, in advertising its goods for sale, a realistic depiction of the item,” and stated that:

[W]e must balance against opposer’s argument for the extension of existing case law on functionality [to] what is shown by the record to be long use of the keel cooler depiction by applicant in the manner of a logo. Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply theTrafFix test for functionality (a three-dimensional product design is functional if it is “essential to the use or purpose of the product or if it affects the cost or quality of the product”) to the product that results from purchasing the services, or whether the test should be adapted and focus on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service.

Id. at 1794, citingTrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001).

The Board held that opposer had failed to justify an extension of existing law to cover the circumstances of this case, but stated that its decision “does not foreclose the extension ofTrafFix to service marks if circumstances in a future case warrant such an extension.”Duramax, 80 USPQ2d at 1794.

1202.02(a)(viii) Functionality and Non-Traditional Marks

In addition to product design and product packaging, the functionality doctrine has been applied to other non-traditional proposed marks, such as sound, color, and flavor, and the sameMorton-Norwich analysis, discussed above, applies to these marks.See, e.g.,Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 USPQ2d 1120, 1123 (Fed. Cir. 1994),cert. denied, 514 U.S. 1050 (1995) (finding the color black for outboard motors functional because it provided competitive advantages such as ease of coordination with a variety of boat colors and reduction in the apparent size of the engines);In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013) (finding the color black for floral packaging functional because there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers in order to communicate a desired sentiment or occasion such as elegance, bereavement, or Halloween);In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (finding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which imparts a flavor of peppermint, can improve the effectiveness of sublingual nitroglycerin spray);In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (affirming the refusal to register an alarm sound emitted by personal security alarms in the normal course of operation without showing of acquired distinctiveness);Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1447 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that coated abrasive manufacturers have a competitive need to use various shades of purple, including applicant’s shade, and that “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.”);In re N.V. Organon, 79 USPQ2d 1639, 1645-46 (TTAB 2006) (finding the flavor orange functional for pharmaceuticals where the evidence showed the flavor served to mask the otherwise unpleasant taste of the medicine flavor);see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use “would put competitors at a significant non-reputation-related disadvantage,” even where the color was not functional in the utilitarian sense);TMEP §§1202.02(a)(vi)and1202.05(b) (regarding aesthetic functionality and color marks).

Examining attorneys should also consider the functionality doctrine in relation to other types of non-traditional marks, such as scent. For example, an application to register scent for an air freshener or an application to register the sound of a ring tone for downloadable ring tones must be refused as functional, as the proposed marks are essential to the use or purpose of the goods.Cf. Vertex, 89 USPQ2d at 1703 (finding that the “ability of applicant’s [security alarms] to emit a loud, pulsing sound is essential to their use or purpose” because the evidence showed that use of a loud sound as an alarm is important and that alternating sound pulses and silence is a "more effective way to use sound as an alarm than is a steady sound”).

1202.02(b) Distinctiveness of Trade Dress

Regardless of whether a proposed trade dress mark is refused as functional under §2(e)(5), the examining attorney must also examine the mark for distinctiveness. Trade dress that is not inherently distinctive and that has not acquired distinctiveness under §2(f) must be refused registration. The statutory basis for the refusal of registration on the Principal Register on the ground that the trade dress is nondistinctive is §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, for trademark applications, or §§1, 2, 3, and 45 of the Trademark Act,15 U.S.C. §§10511052,1053, and1127, for service mark applications.

InWal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), the Supreme Court distinguished between two types of trade dress – product design and product packaging. If the trade dress falls within the category of product "design," it can never be inherently distinctive.Id. at 212, 54 USPQ at 1068 (“It seems to us that design, like color, is not inherently distinctive.”). Moreover, the Court held that in close cases in which it is difficult to determine whether the trade dress at issue is product packaging or product design, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”Id. at 215, 54 USPQ2d at 1070;see In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006). (Note: If the trade dress is functional, it cannot be registered despite acquired distinctiveness.TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001)).

A claim of acquired distinctiveness under §2(f) will not overcome a functionality refusal, but may overcome a nondistinctiveness refusal. For example, if the examining attorney issues a refusal on the basis that a product packaging mark is functional and, in the alternative, is nondistinctive, and the applicant asserts acquired distinctiveness in response, the examining attorney must maintain the previously issued functionality refusal, if appropriate, and determine whether the applicant’s evidence would be sufficient to overcome the nondistinctiveness refusal, if the functionality refusal is ultimately reversed.

If the examining attorney fails to separately address the sufficiency of the applicant’s evidence of acquired distinctiveness, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness, if the mark is ultimately found not to be functional.See In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009) (holding that an examining attorney had “effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness,” where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f), if it were ultimately found to be nonfunctional). SeeTMEP §§1209.02(a)(ii) and1212.02(i) regarding assertion of acquired distinctiveness in response to an Office action and claiming acquired distinctiveness with respect to incapable matter.

1202.02(b)(i) Distinctiveness and Product Design Trade Dress

A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f).Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-216, 54 USPQ2d 1065, 1069-70 (2000). Therefore, as a matter of law, product design cannot be considered inherently distinctive and cannot be registered without a showing of secondary meaning. Id. at 213–14, 54 USPQ2d at 1069. The Supreme Court noted that product design almost invariably serves purposes other than source identification, and that "[c]onsumers are aware . . . that, almost invariably, even the most unusual of product designs -- such as a cocktail shaker shaped like a penguin -- is intended not to identify the source, but to render the product itself more useful or appealing."Id.

In applications seeking registration of marks comprising product design, the examining attorney must refuse registration on the ground that the proposed mark is not inherently distinctive unless the applicant claims that the mark has acquired distinctiveness under §2(f) and provides sufficient evidence to show that the mark has acquired distinctiveness. The ground for the refusal is that the proposed mark consists of nondistinctive product design, and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127. Because product design cannot be inherently distinctive as a matter of law, perWal-Mart, if the applicant has not claimed acquired distinctiveness, supporting evidence for the refusal is unnecessary. 529 U.S. at 213-216, 54 USPQ2d at 1069-70. If the product design is not functional, the mark may be registered on the Supplemental Register, or, if the applicant shows that the product design has acquired distinctiveness, on the Principal Register under §2(f). SeeTMEP §§815–816.05 regarding the Supplemental Register,1202.02(a)–1202.02(a)(viii) regarding functionality,1202.02(b)–1202.02(b)(ii) regarding distinctiveness, and1212–1212.10 regarding acquired distinctiveness. A refusal on the ground that the entire proposed mark is not inherently distinctive generally is not appropriate if the mark includes additional distinctive matter beyond just the product design, such as words and/or images. In such situations, the applicant may be required to disclaim or claim acquired distinctiveness in part as to any non-inherently distinctive elements.

For applications based on §1(b) of the Trademark Act,15 U.S.C. §1051(b), the examining attorney must issue the nondistinctiveness refusal for a product design mark even if the applicant has not filed an allegation of use. SeeTMEP §1202.02(d) regarding trade dress in intent-to-use applications. For applications based on §44 or §66(a), even though the applicant does not need to show use in commerce, the same standards regarding product design apply and the examining attorney must issue the nondistinctiveness refusal, assuming acquired distinctiveness has not been established. SeeTMEP §1010regarding §44 applications andTMEP §1212.08 regarding distinctiveness in §44 or §66(a) applications.

In distinguishing between product packaging and product design trade dress,Wal-Mart instructs that, in “close cases,” courts should classify the trade dress as product design and, thus, require proof of secondary meaning. 529 U.S. at 215, 54 USPQ2d at 1070. In addition, product design can consist of design features that are incorporated in the product and need not implicate the entire product.See id. at 207, 213, 54 USPQ2d at 1066, 1069 (a “cocktail shaker shaped like a penguin” is product design, as is “a line of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits, and the like”);In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006) (holding the mark to be product design trade dress where the mark was for clothing and consisted of a label with the words “FLASH DARE!” in a V-shaped background and cut-out areas located on each side of the label with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device).

Applicants face a heavy burden in establishing distinctiveness in an application to register trade dress.Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) ;see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) (“secondary meaning in a product configuration case will generally not be easy to establish”). A mere statement of five years’ use is generally not sufficient.See, e.g.,In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1284, 1286 (TTAB 2000) (noting the statutory language regarding acquired distinctiveness “is permissive, and the weight to be accorded [evidence of five years of substantially exclusive use] depends on the facts and circumstances of the particular case,” and finding evidence of seven to seventeen years of use insufficient to support a claim of acquired distinctiveness). Generalized sales and advertising figures by themselves will usually be insufficient proof of secondary meaning where the promotional material does not use the design alone but instead with other marks.SeeGrote Indus, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1213 (TTAB 2018) (where advertising prominently used word mark, consumers are more likely to associate the word mark rather than the design with the source of the goods);In re Soccer Sport Supply Co., 507 F.2d 1400, 184 USPQ 345, 348 (CCPA 1975) (advertising displaying the design at issue along with word marks lacked the “nexus” that would tie together use of the design and the public’s perception of the design as an indicator of source);In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593, 595 (CCPA 1967) (where a container design appeared with a word mark, any alleged association of the design with the company “was predicated upon the impression imparted by the [word] mark … rather than by any distinctive characteristic of the container per se.”). Furthermore, a product design may become generic and thus incapable of functioning as an indicator of source because it is basic or common in an industry or is a mere refinement of a product design commonly used for the relevant goods.See Stuart Spector Designs, 94 USPQ2d at 1555 (noting that a design may be deemed incapable where it is, "at a minimum, so common in the industry that it cannot be said to identify a particular source."). These common or basic shapes are not registrable on the Principal Register under §2(f),15 U.S.C. §1052(f), or on the Supplemental Register under §23(c),15 U.S.C. §1091(c). For these incapable product designs, registration on the Principal Register must be refused on the ground that the proposed mark fails to function as a mark, citing Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks.See15 U.S.C. §§1051,1052,1053,1127. The ground for refusal on the Supplemental Register is that the mark is incapable of functioning as a mark under §§ 23(c) and 45.See15 U.S.C. §§1091(c),1127

SeeTMEP §1212.02(i)regarding acquired distinctiveness with respect to incapable matter.

1202.02(b)(ii) Distinctiveness and Product Packaging Trade Dress

Product packaging trade dress may be inherently distinctive.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068 (2000) (“The attribution of inherent distinctiveness to certain . . . product packaging derives from the fact that the very purpose of . . . encasing [a product] in a distinctive packaging, is most often to identify the source of the product”).But seeIn re Forney Indus., 127 USPQ2d 1787, 1792 (TTAB 2018) (“Wal-Mart clarifies that, while certain types of product packaging may be inherently distinctive source indicators, a color mark, that is, a mark consisting of color [without additional elements]—whether applied to a product or its packaging—is not among them.”)

Therefore, in applications seeking registration of marks comprising product packaging, the examining attorney must assess inherent distinctiveness. If it is lacking, registration must be refused on the Principal Register on the ground that the proposed mark is nondistinctive trade dress under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, for trademark applications, or under §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127, for service mark applications.

InWal-Mart Stores, Inc. v. SamaraBros., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), the Supreme Court discussed the distinction between the trade dress at issue inTwo Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992), and the product design trade dress (designs for children’s clothing) under consideration inWal-Mart:

Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, but it does not establish thatproduct-design trade dress can be.Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging – which, as we have discussed, normallyis taken by the consumer to indicate origin – or else sometertiumquid that is akin to product packaging (citation omitted).

The examining attorney should be mindful of the Supreme Court’s admonishment that where there are close cases, trade dress should be classified as product design for which secondary meaning is always required.Id. at 215, 54 USPQ2d at 1070.

“[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular source.’”Id. at 210, 54 USPQ2d at 1068 (citingTwo Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)). The test for determining inherent distinctiveness set forth inSeabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977), although not applicable to product design trade dress, is still viable in the examination of product packaging trade dress. The examining attorney should consider the followingSeabrook factors – whether the proposed mark is:

  • (1) a “common” basic shape or design;
  • (2) unique or unusual in a particular field;
  • (3) a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or
  • (4) capable of creating a commercial impression distinct from the accompanying words.

Id; see also In re Chippendales USA, Inc., 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (stating that an abbreviated tuxedo costume consisting of wrist cuffs and a bowtie collar without a shirt “constitute[d] ‘trade dress’ because it was part of the ‘packaging’” for exotic dancing services);Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1205-07, 31 USPQ2d 1321, 1330-32 (Fed. Cir. 1994) (citingSeabrook) (reversing lower court’s summary judgment finding that the shape and appearance of the spice container at issue was not inherently distinctive);In re Frankish Enters. Ltd., 113 USPQ2d 1964, 1973 (TTAB 2015) (finding three-dimensional monster truck design, used in connection with monster truck exhibition services, to be analogous to product packaging for the services and unique in the monster truck field);In re Mars, Inc., 105 USPQ2d 1859, 1869-71 (TTAB 2013) (finding applicant’s packaging configuration for pet food, resembling many cans used in the pet food field, to be a common basic shape, even though it was inverted, and a mere refinement of existing trade dress within the field);In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2029 (TTAB 2010) (affirming that applicant’s “‘three-dimensional, six-sided beveled shape’ [pole spanner design used to promote services] is a mere refinement of a commonly used form of a gasoline pump ornamentation rather than an inherently distinctive service mark for automobile service station services.”);In re Brouwerij Bosteels, 96 USPQ2d 1414, 1421-22 (TTAB 2010) (finding that product packaging trade dress in the nature of a beer glass and stand with wording and scrollwork would be perceived as a mere refinement of a commonly known glass and stand rather than an inherently distinctive indicator of source for the goods);In re File, 48 USPQ2d 1363, 1367 (TTAB 1998) (stating that novel tubular lights used in connection with bowling alley services would be perceived by customers as “simply a refinement of the commonplace decorative or ornamental lighting . . . and would not be inherently regarded as a source indicator.”);In re J. Kinderman & Sons Inc., 46 USPQ2d 1253, 1255 (TTAB 1998) (“while the designs [of packaging for electric lights for Christmas trees that] applicant seeks to register may be unique in the sense that we have no evidence that anyone else is using designs which are identical to them, they are nonetheless not inherently distinctive.”);In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) , aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“[f]or the ‘blue motif’ of a retail store to be registrable on the Principal Register without resort to Section 2(f), the trade dress would have to be immediately recognizable as a distinctive way of identifying the source of the store services.”);Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 42-45, 59 USPQ2d 1720, 1730-32 (1st Cir. 2001) (finding trade dress for common elements of candle labels to be nondistinctive product packaging for which insufficient evidence of acquired distinctiveness had been shown).

Any one of theSeabrookfactors, by itself, may be determinative as to whether the mark is inherently distinctive.See Chippendales, 622 F.3d at 1355, 96 USPQ2d at 1687;Chevron, 96 USPQ2d at 2028.

Where the proposed product packaging trade dress is not inherently distinctive, based on the analysis of theSeabrook factors and supporting evidence, and acquired distinctiveness has not been established, registration must be refused.Chippendales, 622 F.3d at 1351-52, 96 USPQ2d at 1684. The examining attorney must establish a prima facie case that the product packaging is not inherently distinctive.Id. at 1350, 96 USPQ2d at 1684. To meet this burden, the examining attorney must, at a minimum, set forth a “‘reasonable predicate’ for [the] position of no inherent distinctiveness,” for example, by introducing evidence regarding the firstSeabrook factor that competitors use similar basic shapes and designs.In re Pacer Tech., 338 F.3d 1348, 1352, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (finding evidence of design patents showing other adhesive container cap designs sufficient to establish prima facie case that applicant’s adhesive container cap was not inherently distinctive). The USPTO is an agency of limited resources, and as such, it cannot be expected to shoulder the burden of conducting market research.Id.

For applications based on §1(b) of the Trademark Act,15 U.S.C. §1051(b),  unless the drawing, the description of the mark, and the examining attorney’s search results are dispositive of the lack of distinctiveness without the need to consider a specimen, applications for product packaging trade dress generally will not be refused registration on the ground of nondistinctiveness until the applicant has filed an allegation of use.SeeTMEP §1202.02(d). For §44 and §66(a) applications, for which no allegation of use is required, a nondistinctiveness refusal may be issued, if appropriate, based on a review of the drawing, the description of the mark, and any evidence obtained from the examining attorney’s search results. SeeTMEP §1202.02(e).

Regardless of the basis for filing, if a proposed product packaging mark is inherently distinctive, it may be registered on the Principal Register.SeeIn re Procter & Gamble Co., 105 USPQ2d 1119, 1123, 1126 (TTAB 2012) (finding the overall shape of a container with a cap, and the shape of the cap by itself, inherently distinctive for mouthwash);In re Creative Beauty Innovations, Inc., 56 USPQ2d 1203, 1208 (TTAB 2000) (bottle configuration found inherently distinctive);In re Fre-Mar Indus., Inc., 158 USPQ 364, 367 (TTAB 1968) (“[A]lthough the particular shape is a commonplace one for flashlights, it is nevertheless so unique and arbitrary as a container in the tire repair field that it may be inherently distinctive and, therefore, by reason of its shape alone, serve to identify applicant’s goods and distinguish them from like goods of others.”);In re Int'l Playtex Corp., 153 USPQ 377, 378 (TTAB 1967) (container configuration having the appearance of an ice cream cone found inherently distinctive packaging for baby pants).

If a proposed product packaging mark isnot inherently distinctive, the mark may be registered on either the Principal Register under §2(f), upon proof that the mark has acquired distinctiveness or secondary meaning, or on the Supplemental Register. Secondary meaning is acquired when the public views the primary significance of the product packaging as identifying the source of the product rather than the product itself.Wal-Mart, 529 U.S. at 211, 54 USPQ2d at 1068. Whether five years’ use is sufficient depends on the degree to which the mark’s elements are unique or common in the field. This is determined by comparing the specific features comprising the mark with the evidence of competitors’ use of similar features for the identified goods or services. The more unique or unusual the features, the more likely that five years’ use may suffice, but the more common or basic the features, the less likely that five years’ use would suffice. SeeTMEP §1212 regarding claiming acquired distinctiveness andTMEP §1212.05 regarding claiming five years of use as proof of distinctiveness.

In the following cases, the applicant’s evidence was found to be sufficient to support a claim of acquired distinctiveness:In re World’s Finest Chocolate, Inc., 474 F.2d 1012, 1015, 177 USPQ 205, 207 (C.C.P.A. 1973) (package design found to identify applicant’s candy bars and distinguish them from those of others);Ex parte Haig & Haig Ltd., 118 USPQ 229, 230 (Comm’r Pats. 1958) (“[The decree] recited that because of the original, distinctive and peculiar appearance of the ‘Pinched Decanter’ the brand of whiskey in such bottles had come to be known and recognized by the public, by dealers and by consumers; and that the whiskey contained in such bottles had come to be identified with the ‘Pinched Decanter’ in the minds of the public generally.”).

SeeTMEP §§1212-1212.10regarding acquired distinctiveness and§§815-816.05 regarding the Supplemental Register. InIn re Usher, S.A., 219 USPQ 920, 921 (TTAB 1983) , the evidence of secondary meaning was insufficient (holding that the configuration of a package for mint candies was not functional but the package design was not shown to possess secondary meaning).See also Brouwerij Bosteels, 96 USPQ2d at 1424 (evidence of acquired distinctiveness for product packaging trade dress in the nature of a beer glass and stand was insufficient).

In certain cases, product packaging may be incapable of functioning as an indicator of source. “[T]rade dress that cannot serve as an indicator of source is generic and unprotectable.”Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 1326, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999). For example, packaging that is common or basic in an industry or that is a mere refinement of packaging commonly used on the relevant goods will not be perceived as indicating source and is not registrable on the Principal Register under §2(f) or on the Supplemental Register.See Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009) (noting that a product design may be deemed incapable where it is, “at a minimum, so common in the industry that it cannot be said to identify a particular source.”);see also Nora Beverages Inc. v. Perrier Grp. of Am. Inc., 269 F.3d 114, 120, 60 USPQ2d 1038, 1041 (2nd Cir. 2001) (affirming the district court’s finding that the water bottle manufactured and sold by Nora was generic because “it was used, with minor variations, throughout the entire market of similar products”);Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 583-84, 27 USP2d 1189, 1193 (2d Cir. 1993) (stating that “where it is the custom of an industry to package products in a particular manner, a trade dress in that style would be generic and therefore not inherently distinctive,” such as packaging lime-flavored soda in green twelve-ounce cans, a practice that is so common in the soft drink industry).

The ground for refusal on the Principal Register is that the proposed mark fails to function as a mark under Trademark Act §§1, 2, and 45, for trademarks, and §§1, 2, 3, and 45, for service marks.See15 U.S.C. §§10511052,1053,1127. The ground for refusal on the Supplemental Register is that the mark is incapable of functioning as a mark under §§23(c) and 45.See15 U.S.C. §§1091(c), and1127.

SeeTMEP §815.04 regarding refusal of incapable matter andTMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter.

1202.02(c) Drawings, Descriptions, and Disclaimers in Trade Dress Applications

Applicants often submit drawings and descriptions of marks depicting trade dress and containing matter that is: (1) not part of the mark; (2) functional; (3) nondistinctive and capable; (4) nondistinctive and incapable; (5) inherently distinctive; or (6) a combination of these factors. To ensure proper examination, the drawing and description of such a mark must accurately depict the mark the applicant intends to register. For example, both the drawing and the description of the mark must clearly indicate those portions that are claimed as part of the mark and those that are not.

If the drawing does not meet the requirements of37 C.F.R. §2.52, the examining attorney must require the applicant to submit a substitute drawing and a substitute description of the mark. The examining attorney may require the applicant to provide additional information, such as pictures of the goods, samples, or other relevant materials pursuant to37 C.F.R. §2.61(b), to assist in assessing the accuracy and completeness of the drawing and in crafting a comprehensive description of the mark.

1202.02(c)(i) Drawings of Trade Dress Marks

Drawings of three-dimensional product design and product packaging trade dress marks may not contain elements that are not part of the mark (i.e., matter that is functional or incapable of trademark significance). If the mark comprises only a portion of product design or product packaging, solid lines must be used on the drawing to show the elements of the product design or product packaging that are claimed as part of the mark, and broken or dotted lines must be used to indicate the portions that are not claimed as part of the mark.37 C.F.R. §2.52(b)(4);see In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) (affirming the functionality of a circular-shaped container for the goods and the requirement for an amended drawing to either delete the representation of the container from the drawing or show it in dotted lines);TMEP §807.08.

Since elements on the drawing shown in broken or dotted lines are not part of the mark, they are generally excluded from the examining attorney’s consideration during any §2(d) (likelihood of confusion) analysis.See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006) .

In rare instances where it is impractical to render certain elements of a mark in dotted or broken lines - for example, if those elements are proportionally so small as to render dotted lines illegible - or if dotted lines would result in an unclear depiction of the mark, the applicant may use solid lines. However, the applicant must insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods, as appropriate.

Usually, a drawing of a trade dress mark is depicted in a three-dimensional manner that gives the appearance of height, width, and depth to the mark. Generally, the drawing shows an illustrated rendering of the product design or product packaging, but a photograph of the product design or product packaging is also acceptable. Drawings consisting of either illustrated renderings or photographs of the proposed trade dress will both be subject to the same drawing requirements and must fairly represent the mark (e.g., the drawing shows matter not claimed as part of the mark in broken or dotted lines and it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses).

If the nature of the mark remains unclear from the record, an examining attorney may clarify whether the mark is three-dimensional trade dress by calling or e-mailing the applicant, or issuing an Office action containing requirements about the nature of the mark under37 C.F.R. §2.61(b), for a clear drawing, or for a revised description. Where appropriate, any relevant trade-dress-related refusals (e.g., mark is functional, mark is not inherently distinctive) may also be included in the Office action.

In cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature and the record is unclear, the examining attorney may suggest that the applicant clarify that the mark is two-dimensional in the mark description. SeeTMEP §808.02. If the mark is two-dimensional in nature, the mark should not be characterized as three-dimensional (e.g., that the mark “appearsthree-dimensional”).

If the applicant is required to submit an amended drawing, the mark description must also be amended accordingly. SeeTMEP §1202.02(c)(ii) regarding description requirements for trade dress marks.

1202.02(c)(i)(A) Functional Matter

Functional elements of a trade dress mark are never capable of acquiring trademark significance and are unregistrable, much like informational matter.15 U.S.C.  §1052(e)(5);Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). Therefore, to show that they are not part of the mark, functional elements must be depicted in broken or dotted lines on the drawing to show the position or placement of the claimed portion of the mark.See37 C.F.R. §2.52(b)(4);In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980);In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) . A requirement to amend the drawing to depict functional matter in broken or dotted lines is permitted and generally does not constitute material alteration of the mark, regardless of the filing basis.SeeTMEP §807.14(a). Such an amendment is permissible even in an application under §66(a) because it is not considered an amendment to the mark itself, but rather a change in the manner in which the mark is depicted on the drawing, in order to comply with United States drawing requirements, where functional elements are not considered part of the mark. SeeTMEP §807.14 regarding material alteration andTMEP §§1904.02(j)-(k)regarding drawings in §66(a) applications.

A functionality refusal must issue in cases where the trade dress mark is overall functional. The statutory basis for the refusal is §2(e)(5) of the Trademark Act,15 U.S.C. §1052(e)(5).  When a trade dress mark is not overall functional, but contains minor or insignificant elements that are functional, the examining attorney must require an amended drawing showing the functional elements in broken or dotted lines rather than in solid lines.See37 C.F.R. §2.52(b)(4);Water Gremlin, 635 F.2d at 844, 208 USPQ at 91;Famous Foods, 217 USPQ at 177. The Office action must explain that, because the mark includes functional elements, an amended drawing is required showing the functional elements in broken or dotted lines, and a corresponding amended mark description is required indicating the functional elements depicted in broken or dotted lines are not claimed as part of the mark. The applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable. SeeTMEP §1202.02(a)(v) regarding evidence and considerations regarding functionality determinations andTMEP §1202.02(c)(ii)regarding descriptions of trade dress marks.

Functional matter cannot be disclaimed.See Water Gremlin, 635 F.2d at 844, 208 USPQ at 91 (“The examiner's requirement to delete the [functional] design (or show it in dotted lines) was entirely in order.”);Famous Foods, 217 USPQ at 177 (stating that functional “[f]eatures which are not being claimed as part of applicant's asserted [trade dress] mark should be shown in dotted lines”). A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole and allows the applicant to maintain rights in the disclaimed matter as part of its own mark. Therefore, with respect to three-dimensional trade dress marks, elements that are functional, or intended to show position or placement only, must be shown in broken or dotted lines on the drawing. SeeTMEP §1202.02(c)(iii)regarding disclaiming unregistrable portions of trade dress marks.

1202.02(c)(i)(B) Nondistinctive Matter

Nonfunctional elements of a product design or product packaging trade dress mark that are inherently distinctive, that have acquired distinctiveness, or that are capable but for which acquired distinctiveness has not yet been established, may appear in solid lines on the drawing as part of the mark. Nonfunctional, nondistinctive elements that are capable of trademark significance but for which acquired distinctiveness has not been established must be disclaimed. A disclaimer is appropriate because, while these elements are not source indicators, they may still remain part of the mark.See15 U.S.C. §§1051-10521056(a),1127. The disclaimer must be provided regardless of whether the remaining portions of the mark are determined to be registrable.

Occasionally, a trade dress mark may include elements that are nonfunctional, yet incapable of trademark significance, such as a common or basic shape of a product itself or the packaging in which a product is sold. These elements must be depicted in broken or dotted lines on the drawing because such elements cannot be considered part of the mark.Cf.Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (noting that functional features of product design cannot serve as trademarks);In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (noting that functional features of product packaging should be shown in dotted lines). Usually, amendments of drawings to depict incapable elements in broken or dotted lines do not materially alter the mark because the incapable elements are, by definition, not source indicating.See37 C.F.R. §2.52(b)(4);In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) . Therefore, the examining attorney must issue a requirement for an amended drawing that depicts the incapable elements in broken or dotted lines, and a corresponding amended mark description to reflect that the incapable elements shown in broken or dotted lines are not claimed as part of the mark.See37 C.F.R. §2.52(b)(4). The applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable.

SeeTMEP §807.14 regarding material alteration,TMEP §1202.02(c)(ii)regarding descriptions of trade dress marks,TMEP §1011.03 regarding amendment of marks in §44 applications, andTMEP §§1904.02(j)-(k)regarding amendment of marks in §66(a) applications.

1202.02(c)(i)(C) Drawings in §44 and §66(a) Applications

For trade dress marks in §44 and §66(a) applications, an amendment of the drawing to depict functional or incapable matter in broken or dotted lines is permitted and generally not a material alteration of the mark.SeeTMEP §§807.08 and1904.02(k). Although the mark in a §44 or §66(a) application cannot be amended, a change in the manner in which the mark is depicted may be permitted, in order to comply with the United States drawing requirements. SeeTMEP §1011.03 regarding amendment of marks in §44 applications and§1904.02(j)-(k)regarding amendment of marks in §66(a) applications. For instance, since functional matter is not considered source indicating and is never part of the mark, displaying it in broken or dotted lines shows placement of the functional matter in relation to the registrable portions of the mark.

Similarly, in §44 or §66(a) applications, amendments to delete extraneous matter from photographs, or amendments of drawings from photographs to illustrated renderings showing elements of the mark in dotted or broken lines, will be accepted and will not be considered a material alteration of the mark.

1202.02(c)(ii) Descriptions of Trade Dress Marks Required

An application for a trade dress mark must include an accurate description of the mark.See37 C.F.R. §2.37. If an acceptable statement describing the mark is not in the record, the examining attorney must require the applicant to submit a description to clarify what the applicant seeks to register. The description must adequately describe the mark, with unnecessary matter kept to a minimum. The description must clearly indicate that the mark is “three-dimensional” and constitutes “product design” or “configuration” of the goods themselves or product “packaging” or a “container” in which the goods are sold, or that the trade dress is for services offered (e.g., interior of a restaurant, exterior of a retail establishment, or point-of-sale-display such as a costume used in connection with the services).

If applicable, the description must specify which elements on the drawing constitute the mark and are claimed as part of the mark and which are not. The description of the mark must make clear what any broken or dotted lines represent and include a statement that the matter shown in broken or dotted lines is not claimed as part of the mark.See37 C.F.R. §2.52(b)(4);TMEP §§808-808.03(f). This information must be included in the description. Statements only in a response to an Office action or elsewhere in the record are insufficient. The description must also avoid use of disclaimer-type language, such as “no claim is made to the …,” because of the different legal significance of using broken lines versus submitting a disclaimer. SeeTMEP §1202.02(c)(iii) regarding disclaimers of unregistrable elements of trade dress marks.

In cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature, an applicant may clarify that the mark is two-dimensional in the mark description.SeeTMEP §808.02. If the mark is two-dimensional in nature, the applicant should not characterize the mark as three-dimensional (e.g., that the mark “appears three-dimensional”).

During the prosecution of a trade dress application, if the applicant is required to submit an amended drawing (e.g., showing broken or dotted lines to depict functional matter, to indicate nondistinctive and incapable matter, or to depict matter otherwise not claimed as part of the mark), the examining attorney must also require a corresponding amended description.

Examples of acceptable language for this purpose are: “The broken lines depicting [describe elements] indicate placement of the mark on the goods and are not part of the mark” or “The dotted lines outlining [the goods] are intended to show the position of the mark on the goods and are not part of the mark.”

For example, for the mark below,

Design of mark described as: color blue applied to the cap of the container of the goods, a white background applied to the rest of the container, a blue rectangle with a silver border displayed against the white background, a light blue curving band, and three light blue droplets on the left side of the white background.

an appropriate description (and color claim) of the mark could read:

The colors white, blue, light blue, and silver are claimed as a feature of the mark. The mark consists of the color blue applied to the cap of the container of the goods, a white background applied to the rest of the container, a blue rectangle with a silver border, a light blue curving band, and three light blue droplets. The dotted lines outlining the container and its cap indicate placement of the mark on the goods and are not part of the mark.

For the mark below,

Design of mark described as: a single transverse red stripe applied adjacent to one end of the elongated packaging for the goods.

an appropriate description (and color claim) of the mark would read:

The color red is claimed as a feature of the mark. The mark consists of a single transverse red stripe applied adjacent to one end of the three-dimensional elongated packaging for the goods. The dotted outline of the packaging is intended to show the position of the mark and is not part of the mark.

And for the mark below,

A picture of a guitar.

an appropriate description of the mark would read:

The mark consists of a three-dimensional configuration of a stringed musical instrument body. The neck, peghead, and other instrument parts shown in broken lines serve to show positioning of the mark and form no part of the mark.

The examining attorney must ensure that the description statement has been entered into the Trademark database, so that it will be printed in theOfficial Gazette and on the certificate of registration.SeeTMEP §817.

SeeTMEP §§1202.05(d)(i) and (d)(ii) regarding drawings in applications for color marks consisting solely of one or more colors.

1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress Marks

A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole.TMEP §1213. The applicant maintains rights in the disclaimed matter only as part of its mark. Thus, except in the rare case when a trade dress mark is unitary, unregistrable elements must be either depicted in broken or dotted lines on the drawing or disclaimed, as appropriate. Specifically, elements that are functional or otherwise incapable of trademark significance must be depicted in broken or dotted lines on the drawing. Elements that are nonfunctional but capable of acquiring trademark significance, but for which acquired distinctiveness has not been established, must be disclaimed. SeeTMEP §§1202.02(c)(iii)(A)–(B) regarding functional and nondistinctive matter that cannot be disclaimed.

Trade dress marks generally are not considered unitary, as each of the elements normally creates a separate commercial impression. As stated in the Federal Circuit decisionIn re Slokevage, 441 F.3d 957, 963, 78 USPQ2d 1395, 1400 (Fed. Cir. 2006), “trade dress, by its nature, contains distinct elements and is characterized as the combination of various elements to create an overall impression.” Although each element is combined with others to form one composite mark, each element retains its separate commercial impression such that the mark as a whole is typically not unitary. Therefore, when a mark contains a combination of trade dress and word/design elements, each element should be examined separately for distinctiveness, except in the rare instance where it is shown that the mark as a whole is unitary. If only one element is inherently distinctive, this is not enough to transform the entire mark into an inherently distinctive, unitary mark. SeeTMEP §§1213.05-1213.05(h) regarding unitary marks.

1202.02(c)(iii)(A) Functional Matter

Since functional elements of a trade dress mark are unregistrable as a matter of law and cannot form part of the mark, a disclaimer is not an appropriate means of addressing functional matter in a trade dress mark.See In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) (“The examiner's requirement to delete the [functional] design (or show it in dotted lines) was entirely in order.”);In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (stating that functional “[f]eatures which are not being claimed as part of applicant's asserted [trade dress] mark should be shown in dotted lines”). Instead, if the mark is not overall functional, an amendment of the drawing must be required to depict any minor or insignificant functional elements in broken or dotted lines.Id.;seeTMEP §1202.02(c)(i). However, if the mark is overall functional, registration must be refused under §2(e)(5) of the Trademark Act,15 U.S.C.  §1052(e)(5).

1202.02(c)(iii)(B) Nondistinctive Matter

Sometimes, a trade dress mark, as a whole, is registrable but contains elements that are nondistinctive but capable.SeeTMEP §1202.02(c)(i)(B). In this situation, if acquired distinctiveness has not been established, the capable elements must be disclaimed because, while they are not source indicators, they are still part of the mark. See 15 U.S.C. §§1051-1052, 1056(a),1127. The disclaimer must be provided regardless of whether the remaining portions of the mark are determined to be registrable. However, where the nondistinctive elements are incapable of acquiring distinctiveness, for example, common or basic shapes of product design or product packaging, such elements are not part of the mark and, therefore, must be depicted in broken or dotted lines rather than disclaimed.See37 C.F.R. §2.52(b)(4);cf.Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (noting that functional features of product design cannot serve as trademarks);In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (noting that functional features of product packaging should be shown in dotted lines).

SeeTMEP §1212.02(e)regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f),TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter, andTMEP §§1213.03–1213.03(d) regarding disclaimers of unregistrable components of marks.See also In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) (“[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).”).

Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register,see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (“Section 6 is equally applicable to the Supplemental Register.”);In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of “BALSAM,” found registrable on Supplemental Register for hair conditioner and hair shampoo);In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) (“Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.”).

1202.02(c)(iv) Three-Dimensional Marks

In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition.37 C.F.R. §2.52(b)(2).SeeTMEP §807.10. To accurately reflect the exact nature of the mark, the mark description must state that the mark is three-dimensional in nature. This three-dimensional feature of the mark must be shown in the supporting specimens of use, in order for the drawing to comprise a substantially exact representation of the mark as actually used. Conversely, a specimen depicting a three-dimensional representation of a mark would not be acceptable to show use for a mark that is described or depicted as a two-dimensional mark. If the applicant believes it cannot adequately display its mark in a single rendition, it may petition the Director to waive the requirement and accept a drawing featuring multiple views of the mark.37 C.F.R. §2.146(a)(5).

1202.02(d) Trade Dress in §1(b) Applications

Distinctiveness and Product Design

A product design trade dress mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212, 54 USPQ2d 1065, 1068 (2000);In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006);TMEP §1202.02(b)(i). See TMEP §§1202.02(b) and1202.02(b)(i) regarding distinctiveness of product design trade dress. Therefore, if the mark is comprised of a product design, the examining attorney will refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under §§1, 2, and 45 of the Trademark Act.15 U.S.C. §§10511052, and1127. The examining attorney must make this refusal even in an intent-to-use application under15 U.S.C. §1051(b)  for which no allegation of use has been filed.

Distinctiveness and Product Packaging

If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068-69 (2000);Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773-75, 23 USPQ2d 1081, 1085-86 (1992). See TMEP §§1202.02(b) and1202.02(b)(ii) regarding distinctiveness of product packaging trade dress. This usually requires consideration of the context in which the mark is used and the impression it would make on purchasers. Generally, no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application under15 U.S.C. §1051(b)  until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act,15 U.S.C. §§1051(c)  or(d). However, if appropriate, the examining attorney has discretion to issue this refusal before a specimen is submitted.SeeIn re Mars, Inc., 105 USPQ2d 1859 (TTAB 2013) .

Functionality

To determine whether a proposed product design or product packaging trade dress mark is functional, the examining attorney must consider how the asserted mark is used. Generally, in a §1(b) application, the examining attorney will not issue a refusal on the ground that the mark is functional until the applicant has filed an allegation of use under §1(c) or §1(d) of the Trademark Act,15 U.S.C. §§1051(c)  or(d).

In a §1(b) application for which no specimen has been submitted, if the examining attorney’s research indicates that a refusal based on functionality or nondistinctive trade dress will be made, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the functional nature of the mark is clearly apparent from the drawing, description of the mark, and research conducted by the examining attorney, without the need to await consideration of the specimen, a refusal based on functionality or nondistinctive trade dress may issue prior to the filing of the allegation of use.SeeIn re Mars, Inc., 105 USPQ2d 1859.

1202.02(e) Trade Dress in §44 and §66(a) Applications

Distinctiveness and Product Design

A product design trade dress mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-213, 54 USPQ2d 1065, 1068-1069 (2000);In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006);TMEP §1202.02(b)(i). See TMEP §§1202.02(b) and1202.02(b)(i) regarding distinctiveness of product design trade dress. Therefore, if the proposed mark is comprised of a product design, the examining attorney must refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under §§1, 2, and 45 of the Trademark Act.15 U.S.C. §§10511052, and1127.

Distinctiveness and Product Packaging

If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068-69 (2000);Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773-75, 23 USPQ2d 1081, 1085-86 (1992). See TMEP §§1202.02(b) and1202.02(b)(ii) regarding distinctiveness of product packaging trade dress. Because a specimen of use is not required prior to registration in these cases, it is appropriate for the examining attorney to issue the refusal where the mark on its face, as shown on the drawing and described in the description of the mark, reflects a lack of distinctiveness.Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application despite the lack of a specimen).

Functionality

If the application itself (i.e., the drawing, the description of the mark, and identification of goods/services) and/or the evidence uncovered during an independent search support that the proposed mark is functional, the examining attorney must issue a refusal of registration on the Principal Register under §2(e)(5). SeeTMEP §§1202.02(a)–1202.02(a)(viii) regarding functionality.

1202.02(f) Identification of Goods/Services in Trade Dress Applications
1202.02(f)(i) Product Design

Trade dress includes the three-dimensional design or configuration of the product itself. In such cases, the drawing usually depicts the item listed in the identification of goods (e.g., the drawing shows a three-dimensional design of a guitar and the goods are “guitars”). However, sometimes the identification of goods/services in a product-design application includes different or unrelated products or services that are, on their face, inconsistent with the product design depicted on the drawing (e.g., the drawing shows a three-dimensional design of a guitar and the identification includes “drums and pianos” or “retail music stores”). This presents an issue of “inconsistent goods.” In rare cases, slight variations are acceptable if the products have a “consistent overall look” such that the changes do not alter the distinctive characteristics and the trade dress conveys a “single and continuing” commercial impression.Cf. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 173, 57 USPQ2d 1125, 1131 (3d Cir. 2000) (quotingRose Art Indus., Inc. v. Raymond Geddes & Co., 31 F. Supp. 2d 367, 373, 49 USPQ2d 1180, 1184 (D.N.J. 1998),rev’d on other grounds sub nom.Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 57 USPQ2d 1125 (3d Cir. 2000)) (stating that trade dress protection for a series or line of products or packaging depends on them having a consistent overall look and remanding for proper application of the standard);The Walt Disney Co. v. GoodTimes Home Video Corp., 830 F. Supp. 762, 766, 29 USPQ2d 1047, 1050 (S.D.N.Y. 1993) (setting forth the “consistent overall look” standard and applying it to a claim of protection for a line of packaging trade dress). For example, the drawing of a three-dimensional design of a guitar might reasonably reflect the consistent overall look of both guitars and ukuleles, which can share a very similar shape and appearance.

Section 1(a) Applications:Where the identification of goods/services, the description of the mark, or other evidence of record indicate that not all of the goods/services in the identification are represented in the three-dimensional mark depicted on the drawing, the examining attorney must refuse registration on the ground that the mark fails to function as a mark for the inconsistent goods/services. The statutory bases for the refusal are §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127 for trademarks and §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127, for service marks.

The examining attorney must specify the inconsistent goods/services subject to refusal and request evidence and/or additional specimens to substantiate use of the mark in connection with the inconsistent goods/services.37 C.F.R. §2.61(b). The applicant may overcome the refusal by providing (1) additional specimens showing the inconsistent goods in the shape of the design depicted on the drawing or (2) sufficient evidence that the three-dimensional product design or configuration mark functions as a source indicator in connection with the inconsistent goods/services listed in the identification. The applicant may also delete the inconsistent goods/services.

The examining attorney must also examine the drawing and the specimen to determine whether the specific three-dimensional product design mark depicted on the drawing is a substantially exact representation of the mark shown on the specimen.TMEP §807.12(a).

Section 1(b) Applications: In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that the applicant may not be able to show proper trademark use of the product design mark for the inconsistent goods/services, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This advisory is given strictly as a courtesy. If information regarding the possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration after submission of the use allegation. When the record indicates that the product design would not be perceived as a mark for the inconsistent goods/services, the examining attorney may make the failure to function as a mark refusal prior to the filing of the allegation of use.

When an amendment to allege use under15 U.S.C. §1051(c),  or a statement of use under15 U.S.C. §1051(d),  is submitted in connection with a §1(b) application, the examining attorney should follow the procedures discussed above for product-design trade dress in §1(a) applications.

Section 44 and Section 66(a) Applications:A specimen is not required in a §44 or §66(a) application to show use of the proposed mark in commerce in connection with the identified goods/services. However, since these applications are otherwise examined under the same standards as applications under §1, it is appropriate for the examining attorney to refuse registration on the ground that the mark fails to function as a mark for the inconsistent goods/services where the drawing, the description of the mark, the identification of goods/services, or other evidence indicates that the identification includes goods/services that are, on their face, inconsistent with the specific three-dimensional product design depicted on the drawing (e.g., a three-dimensional toy car product design for “toy boats”). The statutory bases for the refusal are §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, for trademarks and §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127, for service marks.Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application). The examining attorney must also request evidence to substantiate that the proposed mark could function as a source indicator in connection with the inconsistent goods/services.37 C.F.R. §2.61(b). This is not a requirement for specimens. To overcome the refusal, the applicant must provide evidence showing that the three-dimensional product design or configuration mark functions as a source indicator in connection with the inconsistent goods/services listed in the identification. Absent such a showing, the identification of goods/services must be amended to delete the inconsistent goods/services.

1202.02(f)(ii) Product Packaging

The three-dimensional packaging or wrapping in which a product is sold also constitutes trade dress. While a product-design drawing typically depicts the shape or configuration of the product listed in the identification of goods, product packaging can be in any shape or form that serves as packaging for the listed goods. For example, if the drawing depicts a three-dimensional computer mouse, the description of the mark states that the trade dress is productpackaging, and the identified goods are “cosmetics and hair brushes,” it is conceivable that the goods could be sold in packaging shaped like a computer mouse, and it does not mean that the goods themselves must be in the shape of a computer mouse. However, where the drawing depicts a three-dimensional computer mouse, the description of the mark states that the trade dress is productdesign or configuration, the identified goods are “cosmetics and hair brushes,” and the goods are not in the shape of a computer mouse, this presents a potential issue of “inconsistent goods.”SeeTMEP §1202.02(f)(i).

In most cases, the specific three-dimensional product packaging depicted on the drawing houses the product being sold (e.g., the drawing shows a three-dimensional bottle and the goods are “wine”). However, in rare cases, the identification of goods may include products (or services) that appear, on their face, to be inconsistent with the type of packaging design depicted on the drawing (e.g., a drawing showing a three-dimensional bottle design for “automobiles” or other “inconsistent goods” that are not likely to be sold in bottles). In such cases, where the drawing, the description of the mark, the specimen, or any other evidence of record does not support that the three-dimensional product packaging depicted on the drawing would serve as packaging for the goods, the applicant must provide sufficient evidence that the proposed trade dress serves as the actual shape of the packaging for the inconsistent goods or has a “consistent overall look” across all the goods listed in the identification.Cf. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 173, 57 USPQ2d 1125, 1131 (3d Cir. 2000) (quotingRose Art Indus., Inc. v. Raymond Geddes & Co., 31 F. Supp. 2d 367, 373, 49 USPQ2d 1180, 1184 (D.N.J. 1998) ,rev’d on other grounds sub nom. Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 57 USPQ2d 1125 (3d Cir. 2000)) (stating that trade dress protection for a series or line of products or packaging depends on them having a consistent overall look and remanding for proper application of the standard);The Walt Disney Co. v. GoodTimes Home Video Corp., 830 F. Supp. 762, 766, 29 USPQ2d 1047, 1050 (S.D.N.Y. 1993) (setting forth the “consistent overall look” standard and applying it to a claim of protection for a line of packaging trade dress). In this situation, the same analysis, refusal, and requirements that apply to product design also apply to product packaging.SeeTMEP §1202.02(f)(i).

1202.03 Refusal on Basis of Ornamentation

Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127.

For a mark for services, if the applied-for matter would be perceived only as decoration or ornamentation when used in connection with the identified services, a refusal as nondistinctive trade dress must issue under Trademark Act §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127. SeeTMEP §§1202.02 and1202.02(b)-1202.02(b)(ii) regarding trade dress andTMEP §§1301.02–1301.02(f) regarding matter that does not function as a service mark.

Matter that serves primarily as a source indicator, either inherently or as a result of acquired distinctiveness, and that is only incidentally ornamental or decorative, can be registered as a trademark.In re Paramount Pictures Corp., 213 USPQ 1111, 1114 (TTAB 1982).

With regard to registrability, ornamental matter may be categorized along a continuum ranging from ornamental matter that is registrable on the Principal Register, to purely ornamental matter that is incapable of trademark significance and unregistrable under any circumstances, as follows:

  • (1) Ornamental matter that serves as an identifier of a “secondary source” is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation “NEW YORK UNIVERSITY”) can convey to the purchasing public the “secondary source” of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship or authorization by the identified party is indicated.SeeTMEP §1202.03(c).
  • (2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f), if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods.SeeTMEP §1202.03(d).
  • (3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
  • (4) Some matter is determined to be purely ornamental and, thus, incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register.SeeTMEP §1202.03(a).

The examining attorney should consider the following factors to determine whether ornamental matter can be registered: (1) the commercial impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary source, if applicable; and (4) evidence of distinctiveness. These factors are discussed in the following sections.

1202.03(a) Commercial Impression

The examining attorney must determine whether the overall commercial impression of the proposed mark is that of a trademark. Matter that is purely ornamental or decorative does not function as a trademark and is unregistrable on either the Principal Register or the Supplemental Register.

The significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, “smiley face,” or the phrase “Have a Nice Day”) are normally not perceived as marks.See, e.g.,In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (“The phrase “I LOVE YOU” conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace.”).

The examining attorney must also consider the size, location, and dominance of the proposed mark, as applied to the goods, to determine whether ornamental matter serves a trademark function.In re Hulting, 107 USPQ2d 1175, 1177-79 (TTAB 2013) ;In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1687 (TTAB 2013) (quotingIn re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008));In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984). A small, neat, and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas a larger rendition of the same matter emblazoned across the front of a garment (or a tote bag, or the like) may be perceived merely as a decorative or ornamental feature of the goods. However, a small, neat, and discrete word or design feature will not necessarily be perceived as a mark in all cases. Moreover, the size of the mark on clothing is only one consideration in determining the registrability of a mark.In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1689.

1202.03(b) Practices of the Trade

In determining whether a proposed mark is inherently distinctive, factors to be considered include whether the subject matter is unique or unusual in a particular field, as opposed to a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods that would be viewed by the public as a dress or ornamentation for the goods.See, e.g.,In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403-04 (TTAB 2018) (“The ornamental nature of the proposed mark [I LOVE YOU] is corroborated by the third-party use of that phrase on bracelets and other jewelry demonstrating that consumers are accustomed to seeing similar, ornamental displays of I LOVE YOU on bracelets and other jewelry from different sources.”);In re General Tire & Rubber Co., 404 F.2d 1396, 1398, 160 USPQ 415, 417 (C.C.P.A. 1969) (affirming the ornamentation refusal of a mark comprising three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire; mark was a refinement of the practice, which consumers were familiar with, of whitewalls as decoration on tires);In re Chung, Jeanne & Kim Co., 226 USPQ 938, 941-42 (TTAB 1985) (finding that stripe design applied to sides of sport shoes was mere refinement of the common and well-known form of ornamentation in the field of sports shoes).

Even if a proposed mark is not inherently distinctive, it may be registered on the Principal Register if it has become distinctive of the applicant’s goods in commerce.SeeTMEP §1202.03(d). The practices of the trade may be relevant in assessing the applicant’s burden of proving that the proposed mark has become distinctive. Typically, more evidence is required if the proposed mark is a type of ornamental matter used so frequently in the relevant industry that consumers would be less apt to discern a source-indicating significance from its use.See Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288, 292-99 (TTAB 1969) (extensive evidence of record supported that cornflower design was recognized as a trademark for coffee percolators, culinary vessels, and utensils).Cf. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987) (affirming refusal to register design of morning glories and leaves for tableware, the Board noting that the design “has not been shown to be other than another decorative pattern without trademark significance . . . .”).

If the applicant cannot show that the proposed mark has acquired distinctiveness, the mark in an application under §1 or §44 of the Trademark Act may be registered on the Supplemental Register if it is capable of distinguishing the applicant’s goods or services.15 U.S.C. §1091.  The practices of the trade may be relevant in determining whether a proposed mark is capable of distinguishing the goods or services. If the practices of the trade suggest that certain matter performs the function of a trademark by signifying to purchasers and prospective purchasers the goods of a particular entity and distinguishing them from the goods of others, the matter is assumed to be capable of distinguishing the applicant’s goods and, therefore, may be registered on the Supplemental Register.See In re Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 410 (C.C.P.A. 1961) (holding that repeating pattern of green lines, used to cover the entire back surface of safety paper products (e.g., checks), was registrable on the Supplemental Register for safety paper products, where the record showed that it had long been the practice in the industry to use distinctive overall surface designs to indicate origin of the products).

1202.03(c) “Secondary Source”

To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental. To show secondary source, the applicant may show: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act; (2) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on a foreign registration under §44(e) or §66(a) of the Trademark Act for which an affidavit or declaration of use in commerce under §8 or §71 has been accepted; (3) non-ornamental use of the mark in commerce on other goods or services; or (4) ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods or services. Ownership of an intent-to-use application for which no allegation of use under §1(c) or §1(d) of the Trademark Act,15 U.S.C. §§1051(c)  or(d), has been filed is not sufficient to show secondary source. If the applicant establishes that the proposed mark serves as an identifier of secondary source, the matter is registrable on the Principal Register.

InIn re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982) , the Board held that MORK & MINDY was registrable for decals because the applicant had a television series of that name and had previously registered MORK & MINDY for various goods and services, and found that theprimary significance of the term MORK & MINDY to a prospective purchaser of decals was to indicate the television series and the principal characters of the television series. The Board held that the case was controlled by its decision inIn re Olin Corp., 181 USPQ 182 (TTAB 1973) (stylized “O” design registrable for T-shirts, where applicant had previously registered the “O” design for skis), in which that Board had stated:

It is a matter of common knowledge that T-shirts are “ornamented” with various insignia . . . or … various sayings such as “Swallow Your Leader.” In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, “Swallow Your Leader” probably would not be considered as an indication of source.

Id. at 182.

InParamount, the Board stated that “[t]he ‘ornamentation’ of a T-shirt can be of a special nature which is [sic] inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source.” 213 USPQ at 1112. Applying the test set forth inOlin, the Board found that “the paired names ‘MORK & MINDY’, while certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same sense as the stylized ‘O’ in Olin.”Id. at 1113. The Board noted that “while purchasers may be accustomed to seeing characters’ names and images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters’ names and images used as trademarks to indicate source of origin.”Id. at 1114.

See alsoIn re Watkins Glen Int’l, Inc., 227 USPQ 727, 729 (TTAB 1985) (reversing the refusal and finding stylized checkered flag design registrable for patches and clothing items, where applicant had previously registered WATKINS GLEN and checkered flag design (with “WATKINS GLEN” disclaimed) for services);In re Expo ‘74, 189 USPQ 48, 50 (TTAB 1975) (reversing the refusal and holding EXPO ‘74 registrable for handkerchiefs and T-shirts, since applicant, organizer of the 1974 World’s Fair, had previously registered EXPO ‘74 for other goods and services).

A series of ornamental uses of the proposed mark on various items will not establish that the proposed mark functions as an indicator of secondary source; use as a trademark for the other goods or services must be shown.See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) (affirming the refusal to register ASTRO GODS and design for T-shirts, despite applicant’s ornamental use of the proposed mark on other goods and appearance of applicant’s trade name “Astro Gods Inc.” on the T-shirt as part of a copyright notice).

1202.03(d) Evidence of Distinctiveness

As noted above, even if a proposed mark is not inherently distinctive, it may nevertheless be registered on the Principal Register under §2(f),15 U.S.C. §1052(f),  if it becomes distinctive of the applicant’s goods in commerce. SeeTMEP §§1212–1212.10 regarding acquired distinctiveness.

Generally, evidence of five years’ use alone is not sufficient to show acquired distinctiveness of a mark that is mere ornamentation. Concrete evidence that the proposed mark is perceived as a mark for the relevant goods or services is required to establish distinctiveness.See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a) Applications

Generally, the issue of ornamentation is tied to the use of the proposed mark as evidenced by the specimen. Therefore, unless the ornamental nature of the mark is clearly apparent from the drawing and description of the mark, no ornamentation refusal will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use with an allegation of use under §1(c) or §1(d) of the Trademark Act,15 U.S.C. §§1051(c)  or(d).

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue an ornamentation refusal where the proposed mark on its face, as shown on the drawing and described in the description, reflects a failure to function.In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application for a mark comprising pocket-stitching design for clothing).

1202.03(f) Ornamentation: Case References

The following cases show the various ways in which ornamental matter was found not to function as a mark.

1202.03(f)(i) Slogans or Words Used on the Goods

Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods.SeeIn re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (“The phrase ‘I LOVE YOU’ conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace.”);D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (finding that customers purchase products with the phrase I ♥ DC specifically because they are ornamented with the phrase in an informational manner and that, given the phrase’s “significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label”);In re Hulting, 107 USPQ2d 1175, 1181 (TTAB 2013) (finding that proposed mark NO MORE RINOS! conveys a political slogan devoid of source-identifying significance);In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator);In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (SUMO, as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps, serves merely as an ornamental feature of applicant's goods);In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (YOU ARE SPECIAL TODAY for ceramic plates found to be without any source-indicating significance);In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts.”);Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (DAMN I’M GOOD, inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance).

See alsoTMEP §1202.04 regarding informational matter.

1202.03(f)(ii) Designs Used on the Goods

See In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire considered just a refinement of a general ornamental concept rather than a trademark);In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961) (two parallel colored bands at the top of the sock, the upper band red, and the lower band blue, for men’s ribbed socks held merely ornamental absent convincing evidence that the purchasing public recognized the design as a trademark); In re Sunburst Prods., Inc.,51 USPQ2d 1843 (TTAB 1999) (combination of matching color of watch bezel and watch band and contrasting colors of watch case and watch bezel for sports watches found to be nothing more than a mere refinement of a common or basic color scheme for sports watches and, therefore, would not immediately be recognized or perceived as a source indicator);In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern design of morning glories and leaves for tableware not distinctive and not shown to be other than decorative pattern without trademark significance).

1202.03(f)(iii) Trade Dress on the Containers for the Goods

See In re J. Kinderman & Sons Inc., 46 USPQ2d 1253 (TTAB 1998) (design of container for Christmas decorations that resembles a wrapped Christmas gift not inherently distinctive);In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994) (rose design used on cosmetics packaging is essentially ornamental or decorative background and does not function as mark);In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim).

1202.03(g) Ornamentation Cases and Acquired Distinctiveness

In the following cases, subject matter sought to be registered was found to have acquired distinctiveness as a trademark:In re Jockey Int’l, Inc., 192 USPQ 579 (TTAB 1976) (inverted Y design used on underwear found to have acquired distinctiveness, where evidence showed extensive use on packaging and in advertising in a manner calculated to draw the attention of prospective purchasers to the design and for them to look at the design as a badge of origin);Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (blue cornflower design for coffee percolators, culinary vessels, and utensils found to have acquired distinctiveness, where evidence showed extensive and prominent use of the design in advertising, use of the design on pins and aprons worn by sales promotion representatives in the course of their duties, and surveys and statements of purchasers indicating that they recognized the design as indicating origin in applicant).

1202.04 Informational Matter

Merely informational matter fails to function as a mark to indicate source and thus is not registrable.See, e.g.,D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (I ♥ DC for bags, clothing, plush toys);In re AOP LLC, 107 USPQ2d 1644, 1655 (TTAB 2013) (AOP for wine);In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (ONCE A MARINE, ALWAYS A MARINE for clothing);In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (SPECTRUM for illuminated pushbutton switches);In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998) (DRIVE SAFELY for automobiles);In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and design for weatherstripping and paper products);In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers);In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD for construction material);In reSchwauss, 217 USPQ 361, 362 (TTAB 1983) (FRAGILE for labels and bumper stickers).

Matter is merely informational and does not function as a mark when, based on its nature and the context of its use by the applicant and/or others in the marketplace, consumers would perceive it as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods/services from those of others.

Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services.In re Eagle Crest, Inc., 96 USPQ2d at 1230. Furthermore, the mere use of the “TM” or “SM” notation, in and of itself, cannot transform an unregistrable term into a trademark or service mark.SeeIn re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1461 (TTAB 1998).

The critical inquiry in determining whether matter functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public.SeeD.C. One Wholesaler, Inc., 120 USPQ2d at 1713;In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827 (TTAB 2012) (noting that the critical inquiry in determining whether a mark functions as a trademark is the “commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the goods or merely as an informational phrase)”);In re Eagle Crest, Inc., 96 USPQ2d at 1229;In re Remington Prods., Inc., 3 USPQ2d at 1715.

Matter may be merely informational and fail to function as a source indicator for various reasons, including one or more of the following:

  • The matter merely conveys general information about the goods or services.SeeTMEP §1202.04(a).
  • The matter is a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources.SeeTMEP §1202.04(b).
  • The matter is a direct quotation, passage, or citation from a religious text used to communicate affiliation with, support for, or endorsement of, the ideals conveyed by the religious text.SeeTMEP §1202.04(c).

If a proposed mark is merely informational, a failure-to-function refusal must issue. If registration is sought on the Principal Register, the statutory basis for this refusal is §§1, 2, and 45 of the Trademark Act,15 U.S.C §§1051,1052, and1127, for trademarks, and §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127, for service marks. If registration is sought on the Supplemental Register, the statutory basis is §§23 and 45,15 U.S.C. §§1052 and1127. Note that an applicant cannot overcome a refusal on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f). SeeTMEP §1202.04(d) regarding amending to the Supplemental Register in response to a merely informational failure-to-function refusal.

If a proposed mark contains registrable matter, a disclaimer of the merely informational matter must be required, unless the mark is unitary. See Trademark Act Section 6(a),15 U.S.C §1056(a);TMEP §§1213,1213.01(b),1213.02,1213.03(a),1213.05. Merely informational matter may be deleted from the drawing if: (1) the deletion does not result in material alteration of the mark and does not change the mark’s overall commercial impression; (2) the matter to be deleted is separable from the other elements; and (3) the mark contains other registrable source-indicating matter.SeeTMEP §§807.14–807.14(a).

In support of the refusal or disclaimer requirement, the examining attorney must explain the basis for the refusal and provide evidence that the matter would not be perceived as a trademark or service mark that indicates a particular source of goods or services. This support may include evidence of decorative or informational use by applicant or other manufacturers on goods of a similar nature, or evidence of frequent use by others in connection with the sale of their own goods or services.See, e.g.,D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that “the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source”);In re Eagle Crest, Inc., 96 USPQ2d at 1230 (noting that, because consumers would be accustomed to seeing the phrase ONCE A MARINE, ALWAYS A MARINE “displayed on clothing items from many different sources, they could not view the slogan as a trademark indicating source of the clothing only in applicant”);In re C.R. Anthony Co., 3 USPQ2d 1894, 1895 (TTAB 1987) (noting that “in every exhibit submitted by applicant to illustrate use of ‘PART OF THE BARGAIN’, that four-word phrase, whether written small or large, forms part of a longer sentence or phrase”);In re Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (finding WHY PAY MORE! to be a common advertising slogan across a wide variety of goods and services and thus it failed to function as a service mark for supermarket services, relying on specimens that showed use of the slogan in phrases such as “Why pay more for groceries?” and “More meat for less. Why Pay More?”).

Although the failure-to-function refusal is normally a specimen-based refusal, a refusal must be issued, regardless of the filing basis, if the evidence supports a determination that a proposed mark is merely informational and thus would not be perceived as an indicator of source.SeeTMEP §1202;cf.In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, “it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark”).

For an application where use has been alleged, registration must be refused even if the specimen of record shows technically acceptable evidence of use.D.C. One Wholesaler, Inc., 120 USPQ at 1716 (“Because the nature of the phrase [I ♥ DC] will be perceived as informational, and also because the ubiquity of the phrase . . . on apparel and other souvenirs of many makers has given it a significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label.”).

SeeTMEP §§1202–1202.19 regarding use of subject matter as a trademark and§1301.02(a) regarding informational matter that does not function as a service mark.

1202.04(a) General Information About the Goods or Services

Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark. This matter is not registrable because consumers would perceive it as imparting its ordinary meaning and not as serving to identify and distinguish the applicant’s goods or services from those of others and to indicate their source.SeeIn re AOP LLC, 107 USPQ2d 1644, 1655 (TTAB 2013) (finding AOP merely informational and not source identifying for wine because it informs consumers of a certification process);In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (“Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable.”);In re T.S. Designs, Inc., 95 USPQ2d 1669, 1671 (TTAB 2010) (finding CLOTHING FACTS to be informational matter and not a source identifier based on the likely consumer perception of the phrase as used on a clothing label reminiscent of the “Nutrition Facts” label for food products);In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006) (finding SPECTRUM failed to function as a mark for illuminated pushbutton switches, because the mark was used in a manner that merely informed potential purchasers of the multiple color feature of the goods);In re Melville Corp., 228 USPQ 970, 972 (TTAB 1986) (describing the phrase BRAND NAMES FOR LESS as “a highly descriptive and informative slogan [that] should remain available for other persons or firms to use to describe the nature of their competitive services”);In re Schwauss, 217 USPQ 361, 362 (TTAB 1983) (finding FRAGILE for labels and bumper stickers merely informational and devoid of any source-identifying function because the term merely informed consumers of the fragility of the item to which the labels and stickers were attached);see alsoIn re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (finding the phrase THE BEST BEER IN AMERICA “so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark”);In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960) (finding that GUARANTEED STARTING for servicing of motor vehicles to facilitate cold-weather operation “does no more than inform the public with reasonable accuracy what is being offered” and is not a service mark);In re Duvernoy & Sons, Inc., 212 F.2d 202, 204, 101 USPQ 288, 289 (C.C.P.A. 1954) (observing that CONSISTENTLY SUPERIOR is a laudatory statement of fact incapable of distinguishing the goods).

Any evidence demonstrating that the public perception of the matter is merely to convey general information about the goods or services supports this refusal. In addition to dictionary or encyclopedia entries showing the meaning or significance of wording, supporting evidence may include materials (e.g., website pages, social-media pages, product fact sheets, and other promotional materials) showing the wording listed with other features of the goods/services, showing the wording being used in a manner that does not stand out from other informational text, or showing the same or similar wording commonly used in business or by other providers of similar goods or services to impart the same kind of general information.

1202.04(b) Widely Used Messages

“Widely used messages” include slogans, terms, and phrases used by various parties to convey ordinary or familiar concepts or sentiments, as well as social, political, religious, or similar informational messages that are in common use or are otherwise generally understood. The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services.In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229-30 (TTAB 2010);cf.In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (I LOVE YOU, appearing on bracelets, would be seen as a term of endearment rather than a source-identifying trademark).

Messages that merely convey ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace are considered commonplace and will be understood as conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function.See, e.g.,D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (I ♥ DC was found not to function as a mark for clothing items because it would be perceived merely as an expression of enthusiasm for the city);In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460 (TTAB 1998) (DRIVE SAFELY was found not to function as a mark when used in connection with automobiles and structural parts therefor because it would be perceived as an everyday, commonplace safety admonition);In re Manco, 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN for products advertised to be recyclable and to promote energy conservation was found not to function as a mark because it merely conveys a message of environmental awareness or ecological consciousness).

Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for the consumer to identify and distinguish the applicant’s goods or services from those of others. For example, the proposed mark ONCE A MARINE, ALWAYS A MARINE, for clothing, was found not to function as a mark because the evidence showed that it is a common motto used by, and in support of, the U.S. Marines.In re Eagle Crest, Inc., 96 USPQ2d at 1232. Similarly, the proposed mark NO MORE RINOS!, for various goods, including bumper stickers, signs, and t-shirts, was found not to function as a mark because the evidence showed that consumers were accustomed to seeing this well-known political slogan on these types of goods from a variety of different sources.In re Hulting, 107 USPQ2d 1175, 1179 (TTAB 2013).

Derivatives or variations of widely used messages also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording.SeeIn re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (finding BRAND NAMES FOR LESS failed to function as a mark based evidence of widespread use of similar marketing phrases, noting that “[t]he fact that applicant may convey similar information in a slightly different way than others is not determinative.”);In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (finding PROUDLY MADE IN THE USA informational in nature; the addition of “Proudly” before the common phrase “Made in USA” merely added “further information about the state of mind of the manufacturer and/or its employees in connection with the production of the goods”);see alsoD.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (noting that the informational significance of I ♥ DC was “reinforced by the fact that similar expressions in the form of ‘I ♥__’ have also been widely used to express such enthusiasms with respect to other places and things”).

Any evidence demonstrating that the public would perceive the wording merely as conveying the ordinary meaning of the message, or enthusiasm for, affinity with, or endorsement of the message, supports this refusal. In addition to dictionary or encyclopedia entries showing the meaning or significance of wording, supporting evidence may include materials (e.g., website pages, Internet search results lists if sufficient surrounding text is included, social-media pages, product fact sheets, and other promotional materials) showing the applicant’s manner of use and the manner of use by third parties.See, e.g.,D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (finding that I ♥ DC failed to function as a mark for clothing items, stating that the evidence shows that the wording “has been widely used, over a long period of time and by a large number of merchandisers as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.”).

The size, location, dominance, and significance of the wording as it is used in connection with the goods or services should also be considered to determine if any of these elements further support the perception of the wording merely as an informational message rather than as indicating the source of goods or services. For example, evidence of use of the wording as adornment, by either the applicant or third parties, may support a determination that a proposed mark does not convey the commercial impression of a trademark that identifies a single source.In re Hulting, 107 USPQ2d 1175, 1179 (TTAB 2013);see alsoD.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that the marketplace is inundated with products featuring the wording “as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source”). In addition, use of the matter in a less prominent manner than other clear source identifiers may also support the conclusion that the matter will be perceived as merely conveying an informational message.Cf.In re Duvernoy & Sons, Inc., 212 F.2d 202, 101 USPQ 288 (C.C.P.A. 1954) (finding that the phrase “Consistently Superior,” which appeared less prominently than appellant’s trade name, was “merely an adjunct thereto, operating in the shadow thereof, to indicate to purchasers that appellant’s goods are always superior in quality” and was “merely a statement of fact which should be available to anyone who feels that his products are, in fact or belief, consistently superior, and wishes to so advise the public”).

1202.04(c) Matter from Religious Texts

Some proposed marks comprise direct quotations, passages, or citations from religious texts, such as the Bible, Quran, Torah, or Diamond Sutra. These quotations, passages, or citations are often used by the providers of goods or services, and by consumers, to communicate affiliation with, support for, or endorsement of, the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing religious references used in this manner in the marketplace, they are unlikely to perceive the matter as indicating source and instead would perceive it merely as conveying an informational message of religious affiliation, endorsement, or support for the messages in the texts.SeeIn re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).

When a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, it fails to function as a mark. Thus, if the proposed mark consists, in its entirety, of this type of matter, the examining attorney must issue a failure-to-function refusal on the ground that it merely conveys an informational message of religious affiliation, endorsement, or support for the ideals or concepts conveyed in the religious text. If the quotation, passage, or citation is part of a proposed mark that also contains registrable elements, the examining attorney must require a disclaimer of the quotation, passage, or citation, if otherwise appropriate.SeeTMEP §§1213,1213.01(b),1213.02,1213.03(a),1213.05.

Given the many different translations of religious texts, it is possible that a quotation or passage from one English version of a religious text will be slightly different from the same quotation or passage in a different English translation of the same religious text. However, for purposes of the examining attorney’s determination, it is sufficient that the quotation or passage appears in any version of the relevant religious text.

To support a refusal or disclaimer requirement on this ground, the evidence must establish that the applied-for mark comprises a quotation, passage, or citation taken from a religious text and that consumers would perceive it as merely conveying affiliation with, affinity for, or endorsement of, the religious message. Evidence may include applicant’s own specimens, advertising, or website, showing how the applicant uses the wording in connection with the identified goods or services, as well as the advertising or packaging of other providers of the same or similar goods or services. Any evidence showing that the use of religious matter in connection with the identified goods or services is typical of use by marketplace participants to proclaim support for, affiliation or affinity with, or endorsement of, the message may support this refusal.SeeD.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016). While the refusal or disclaimer may apply regardless of whether the identified goods or services themselves are religious in nature, the fact that the proposed mark is applied to religious goods or services may lend further support to the refusal or disclaimer requirement.

Sometimes a quotation or passage from a religious text has become part of common, everyday language. If the evidence shows that the average consumer would be unlikely to perceive the wording as conveying information about the applicant’s religious affiliation or endorsement without additional context, the examining attorney should not issue a failure-to-function refusal based on the wording being from a religious text. Instead, the examining attorney should consider whether the wording fails to function because it conveys a widely used message.SeeTMEP §1202.04(b). The following examples illustrate this point:

  • The proposed mark is EYE FOR AN EYE. A review of an online search engine’s results for “eye for an eye” shows that some of the results directly reference religion, but most do not. Many of the results that do not reference religion use the phrase in a discussion of justice. In addition, entering “eye for an eye” into online dictionaries returns results referencing justice, but not religion. This suggests that the wording by itself does not generally have a religious connotation without additional indications of a religious origin, and thus it should not be treated as a quotation or passage from a religious text. But the examining attorney should consider whether the available evidence supports the conclusion that the proposed mark fails to function because it is a commonplace message or otherwise merely conveys a social, political, or ideological message.
  • The proposed mark is EVEN THOUGH I WALK THROUGH THE VALLEY OF THE SHADOW OF DEATH, I WILL FEAR NO EVIL. A review of an online search engine’s results for this phrase shows that most of the results reference religion with only a very few that do not directly mention religion. Of the results that reference religion, most specifically note that the wording is from the Bible’s Psalm 23:4. Thus, the results indicate that the wording has ongoing religious connotation even without additional context, and thus the examining attorney should treat it as a direct quotation or passage from a religious text.

If the matter comprising the proposed mark is religious in nature but is not a quotation, passage, or citation from a religious text, the examining attorney should not refuse registration based on the matter being derived from a religious text. Instead, the examining attorney should consider whether it is merely informational because it conveys a widely used religious message.SeeTMEP §1202.04(b).

1202.04(d) Response Options

An applicant may respond to a merely informational failure-to-function refusal by submitting evidence demonstrating that the matter is perceived as indicating a single source for the identified goods or services.SeeIn re The Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (reversing the refusal to register QUALITY THROUGH CRAFTSMANSHIP for radio equipment, finding that the wording functioned as a mark because applicant extensively advertised the slogan, using it in the manner of a trademark on the goods, and the examiner failed to show others using the wording).

The amount and nature of evidence that may be sufficient to establish that the matter would be perceived as source indicator rather than merely informational is determined on a case-by-case basis. The more generalized or commonplace and widely used the matter is, the more likely it would be perceived as merely informational and the less likely it would perceived as indicating the source of the relevant goods/services.SeeIn re Eagle Crest, 96 USPQ2d 1227, 1229 (TTAB 2010).

Mere claims of long-time use or substantial sales and advertising generally do not prove recognition of the matter as a mark and will not obviate the failure-to-function refusal.SeeIn re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987);In re Wakefern Food, Corp., 222 USPQ 76, 79 (TTAB 1984);In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984).

Similarly, submission of an otherwise acceptable specimen bearing the proposed mark, such as a hang tag or label, will not obviate the refusal because the mere fact that the matter appears on a technically good specimen does not mean that it would be perceived as a mark.SeeD.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (finding that the phrase I ♥ DC “does not create the commercial impression of a source indicator, even when displayed on a hangtag or label”). If the evidence shows that the public would not perceive the proposed mark as serving to indicate the source of the identified goods or services, it does not function as a mark and may not be registered regardless of the manner of use depicted on the specimens or the filing basis on which applicant relies. The examining attorney should not suggest that a substitute specimen be submitted or that the application be amended to an intent-to-use filing basis.

Furthermore, an applicant cannot overcome a failure-to-function refusal issued on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f).SeeIn re Eagle Crest, 96 USPQ2d at 1229. Matter that does not operate to indicate the source or origin of the identified goods or services and distinguish them from those of others does not meet the statutory definition of a trademark and may not be registered, regardless of claims of acquired distinctiveness or the register on which registration is sought.SeeIn re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (finding that the phrase THE BEST BEER IN AMERICA “is so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark” and is incapable of acquiring distinctiveness under section 2(f));In re Helena Rubinstein, Inc., 410 F.2d 438, 441-42, 161 USPQ 606, 608-09 (C.C.P.A. 1969) (finding PASTEURIZED for face cream as so highly descriptive that it fails to function as a source identifier, noting that a proposed mark “cannot properly be registered as a trademark, even on the Supplemental Register, unless it is intended primarily to indicate origin of the goods and is of such a nature that the ordinary purchaser would be likely to consider that it indicated such origin”);In re Remington Prods., Inc., 3 USPQ2d at 1715 (affirming a failure-to-function refusal and denying a claim of acquired distinctiveness for the mark PROUDLY MADE IN THE USA for electric shavers and parts thereof, noting that applicant’s “substantial sales and advertising of its product . . . does not provide recognition by the public of the subject slogan as a trademark.”);D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016) (granting petition to cancel a registration on the Supplemental Register because the mark failed to function as a trademark).

SeeTMEP §714.05(a)(i) regarding amendment to the Supplemental Register or submission of a claim of acquired distinctiveness and§1212.02(i) regarding §2(f) claims as to incapable matter.

1202.05 Color as a Mark

Color marks are marks that consistsolely of one or more colors used on particular objects. For marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, a color trademark might consist of purple used on a salad bowl, pink used on the handle of a shovel, or a blue background and a pink circle used on all or part of a product package.See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (green-gold used on dry cleaning press pads held to be a protectible trademark where the color had acquired secondary meaning);In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink as applied to fibrous glass residential insulation registrable where the evidence showed the color had acquired secondary meaning). Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.

The registrability of a color mark depends on the manner in which the proposed mark is used.Owens-Corning, 774 F.2d at 1120, 227 USPQ at 419. A color(s) takes on the characteristics of the object or surface to which it is applied, and the commercial impression of a color will change accordingly.See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (“a word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances”).

Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act,15 U.S.C.  §1052(f).Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000). SeeTMEP §1202.05(a) and cases cited therein.

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services.Owens-Corning, 774 F.2d at 1124, 227 USPQ at 422;In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) ,aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“blue motif” used in retail stores would likely be perceived by prospective purchasers as “nothing more than interior decoration” that “could be found in any number of retail establishments. Undoubtedly such features are usually perceived as interior decoration or ornamentation.”). However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. The United States Supreme Court has held that color alone may, sometimes, meet the basic legal requirements for a trademark. When it does, there is no rule that prevents color from serving as a mark.Qualitex, 514 U.S. at 161, 34 USPQ2d at 1162. If a color is not functional and is shown to have acquired distinctiveness on or in connection with the applicant’s goods or services, it is registrable as a mark.

Functional color marks are not registrable. SeeTMEP §1202.05(b) and cases cited therein.

1202.05(a) Color Marks Never Inherently Distinctive

Color marks are never inherently distinctive.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citingQualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995));In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001);In re Forney Indus., 127 USPQ2d 1787, 1792-93 (TTAB 2018) (“[A] color mark consisting of multiple colors applied to product packaging is not capable of being inherently distinctive.”);In re Hodgdon Powder Co.,119 USPQ2d 1254, 1255 (TTAB 2016). Therefore, the examining attorney must refuse to register a color mark on the Principal Register, unless the applicant establishes that the proposed mark has acquired distinctiveness under §2(f). The examining attorney must issue this refusal inall color mark applications where acquired distinctiveness has not been shown, regardless of the filing basis of the application. The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, or does not function as a service mark under §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127.

If the proposed color mark is not functional, it may be registrable on the Principal Register if it is shown to have acquired distinctiveness under §2(f).SeeIn re Hodgdon Powder Co.,119 USPQ2d at 1255-59. If it is not distinctive, it is registrable only on the Supplemental Register.See In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) ,aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“blue motif” applied to retail store services not registrable on Principal Register without resort to Section 2(f));Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142, 1145 (TTAB 1990) (the color green, as uniformly applied to medical instruments, not barred from registration on the basis of functionality; however, evidence failed to establish the color had become distinctive of the goods); In re Deere & Co., 7 USPQ2d 1401, 1403-04 (TTAB 1988) (the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence established the colors had become distinctive of the goods).

The burden of proving that a color mark has acquired distinctiveness is substantial.See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink, as uniformly applied to fibrous glass residential insulation, shown to have acquired distinctiveness);In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1028 (TTAB 2017) (finding evidence insufficient to demonstrate that mark consisting of “the color yellow appearing as the predominant uniform background color on product packaging” for cereal had acquired distinctiveness);In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (finding the evidence insufficient to demonstrate that the applied-for mark, "namely, any orange text appearing on a green background," had achieved acquired distinctiveness);In re Benetton Grp. S.p.A., 48 USPQ2d 1214 (TTAB 1998) (evidence insufficient to establish that green rectangular background design had acquired distinctiveness as applied to clothing and footwear);In re American Home Prods. Corp., 226 USPQ 327 (TTAB 1985) (tri-colored, three-dimensional, circular-shaped design found to have become distinctive of analgesic and muscle relaxant tablets); In re Star Pharms., Inc., 225 USPQ 209 (TTAB 1985) (evidence found insufficient to establish that two-colored drug capsules and multi-colored seeds or granules contained therein had become distinctive of methyltestosterone). A mere statement of long use is not sufficient.See, e.g., Benetton, 48 USPQ2d at 1216-17 (despite long use, record devoid of any evidence that the green rectangular background design has been used, promoted, or advertised as a mark). The applicant must demonstrate that the color has acquired source-indicating significance in the minds of consumers.

As noted above, the commercial impression of a color may change depending on the object to which it is applied. Therefore, evidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects, but not for other objects.SeeThrifty, 274 F.3d at 1353, 61 USPQ2d at 1124.Cf. Qualitex, 514 U.S. at 163, 34 USPQ2d at 1162-63 (“The imaginary word ‘Suntost,’ or the words ‘Suntost Marmalade,’ on a jar of orange jam immediately would signal a brand or a product ‘source’; the jam’s orange color does not do so. But, over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods --i. e., ‘to indicate’ their ‘source . . .’”).

1202.05(b) Functional Color Marks Not Registrable

A color mark is not registrable on the Principal Register under §2(f), or the Supplemental Register, if the color is functional.See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165-66, 34 USPQ2d 1161 (1995);Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994),cert. denied, 514 U.S. 1050 (1995);In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs.Brunswick, 35 F.3d 1527, 32 USPQ2d 1120 (holding the color black functional for outboard motors because, while the color did not provide utilitarian advantages in terms of making the engines work better, it nevertheless provided recognizable competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller);In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013) (finding the color black for floral packaging functional because there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers to communicate a desired sentiment or occasion, such as elegance, bereavement, or Halloween); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1446-47 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that opposer had established a prima facie case that coated abrasive manufacturers have a competitive need to be able to use various shades of purple, include applicant’s shade, which applicant had failed to rebut; and that “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.”);In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (color pink used on surgical wound dressings is functional because the actual color of the goods closely resembles Caucasian human skin);In re Orange Commc'ns, Inc., 41 USPQ2d 1036 (TTAB 1996) (colors yellow and orange held to be functional for public telephones and telephone booths, since they are more visible under all lighting conditions in the event of an emergency);In re Howard S. Leight & Assocs., 39 USPQ2d 1058 (TTAB 1996) (color coral held to be functional for earplugs, because it is more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by-product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process.

See alsoIn re Pollak Steel Co., 314 F.2d 566, 136 USPQ 651 (C.C.P.A. 1963) (reflective color on fence found to be functional);Kasco Corp. v. Southern Saw Serv. Inc., 27 USPQ2d 1501 (TTAB 1993) (color green used as wrapper for saw blades is functional when the color is one of the six colors used in a color-coding system to identify the type of blade);R.L. Winston Rod Co. v. Sage Mfg. Co., 838 F. Supp. 1396, 29 USPQ2d 1779 (D. Mont. 1993) (color green used on graphite fishing rods found to be functional);Russell Harrington Cutlery Inc. v. Zivi Hercules Inc., 25 USPQ2d 1965 (D. Mass. 1992) (color white used on cutlery handles found to be functional).

The doctrine of “aesthetic functionality” may apply in some cases where the evidence indicates that the color at issue provides specific competitive advantages that, while not necessarily categorized as purely “utilitarian” in nature, nevertheless dictate that the color remain in the public domain.Brunswick, 35 F.3d at 1533, 32 USPQ2d at 1124;In re Florists’ Transworld Delivery Inc., 106 USPQ2d at 1787-88.See also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (Supreme Court discussed aesthetic functionality, distinguishingQualitex, 514 US 159, 34 USPQ2d 1161, as a case where “aesthetic functionality was the central question…”). SeeTMEP §1202.02(a)(vi).

1202.05(c) Color as a Separable Element

As with all trademarks and service marks, a color mark may contain only those elements that make a separable commercial impression.SeeTMEP §807.12(d). Accordingly, an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression. However, the applicant may register the color of the background material on which the words or design appear apart from the words or design. SeeTMEP §1202.11 regarding background designs and shapes.

The commercial impression of a color may change depending on the object to which it is applied.In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001);In re Hayes, 62 USPQ2d 1443 (TTAB 2002). Granting an application for registration of color in the abstract, without considering the manner or context in which the color is used, would be contrary to law and public policy, because it would result in an unlimited number of marks being claimed in a single application.Cf. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999) (mark with changeable or “phantom” element unregistrable because it would “encompass too many combinations and permutations to make a thorough and effective search possible” and, therefore, would not provide adequate notice to the public);In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (hologram of varying shapes, sizes, content, and positions used on trading cards constitutes more than one “device,” as contemplated by §45 of the Trademark Act). Only one mark can be registered in a single application.TMEP §807.01.

1202.05(d) Drawings of Color Marks Required

All marks, other than sound and scent marks, require a drawing.TMEP §807. An application for a color mark that is filed without a drawing will be denied a filing date.37 C.F.R. §2.21(a)(3). Similarly, an application for a color mark with a proposed drawing page that states “no drawing,” or sets forth only a written description of the mark, will be denied a filing date. The drawing provides notice of the nature of the mark sought to be registered. Only marks that are not capable of representation in a drawing, such as sound or scent marks, are excluded from the requirement for a drawing. Color marks are visual and should be depicted in color drawings, accompanied by: (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement naming the color(s) and describing where the color(s) appear and how they are used on the mark.37 C.F.R. §2.52(b)(1). See TMEP §§807.07–807.07(g) for color mark drawings and808–808.03(f) for description of the mark.

1202.05(d)(i) Drawings of Color Marks in Trademark Applications

In most cases, the proposed color mark drawing will consist of a representation of the product or product package. The drawing of the mark must be a substantially exact representation of the mark as used, or intended to be used, on the goods.37 C.F.R. §2.51. A depiction of the object on which the color is used is needed to meet this requirement.

The object depicted on the drawing should appear in broken or dotted lines. The broken or dotted lines inform the viewer where and how color is used on the product or product package, while at the same time making it clear that the shape of the product, or the shape of the product package, is not claimed as part of the mark.37 C.F.R. §2.52(b)(4);TMEP §807.08. In the absence of a broken-line drawing, the USPTO will assume that the proposed mark is a composite mark consisting of the product shape, or the product package shape, in a particular color.

Color used on multiple goods

If the proposed color mark is used on multiple goods, the drawing required will depend on the nature of the goods. The drawing of the mark must be a substantially exact representation of the mark as used, or intended to be used, on the goods.37 C.F.R. §2.51. A drawing consisting of a depiction of only one of the goods will be accepted if the goods, or the portions of the goods on which the color appears, are similar in form and function so that a depiction of only one of the goods is still a substantially exact representation of the mark as used on all of the goods. For example, if the mark is the color purple used on refrigerators and freezers, a drawing of a purple freezer shown in broken lines (with a description of the mark claiming the color purple and indicating that it is used on the freezer) would be sufficient. Or, if the mark is the color pink used on the handles of rakes, shovels, and hoes, a drawing of any of those items depicted in dotted lines (with a description of the mark claiming the color pink and stating that the handle is pink) would be sufficient. Or, if the mark consists of product packaging for various food items that is always blue with a pink circle, a drawing of any one of the packages shown in dotted lines (with a description of the mark claiming the colors blue and pink and describing the location of the colors on the packaging) would be sufficient.

If the proposed color mark is used on multiple goods that are dissimilar or unrelated, or if color is used in different ways on different goods, so that a depiction of one of the goods is not a substantially exact representation of the mark as used on all of the goods (e.g., the color purple used on microscopes and vending machines), a separate application must be submitted for each item.

Color used on liquids or powders

Sometimes a color mark consists of color(s) used on liquids or powders. For example, the mark might consist of fuchsia body oil or red, white, and blue granular washing machine detergent. In these cases, the nature of the drawing will depend on the manner of use of the liquid or powder. If the liquid or powder is visible through the product package, the drawing should consist of the shape of the product package shown in broken or dotted lines, with the description of the mark identifying the color(s) of the liquid or powder.

1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications

It is difficult to anticipate all of the issues that may arise when examining a proposed color mark for services because there are a myriad of ways that color can be used in connection with services. However, the following general guidelines will be used to determine the sufficiency of drawings in these cases:

  • The purpose of a drawing is to provide notice to the public of the nature of the mark. As with color used on goods, a color service mark does not consist of color in the abstract. Rather, the mark consists of color used in a particular manner, and the context in which the color is used is critical to provide notice of the nature of the mark sought to be registered. Therefore, as with color marks used on goods, a drawing, supplemented with a written description of the mark, is required.
  • The drawing must display the manner in which the mark is used in connection with the services. As with any application, only one mark can be registered in a single application.TMEP §807.01. The mark depicted on the drawing, as used on the specimen, must make a separate and distinct commercial impression in order to be considered one mark. SeeIn re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001);In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988).SeeTMEP §1202.05(c) regarding color as a separable element.
  • If color is used in a variety of ways, but in a setting that makes a single commercial impression, such as a retail outlet with various color features, a broken-line drawing of the setting must be submitted, with a detailed description of the mark claiming the color(s) and describing the location of the color(s).
  • If an applicant who seeks to register a single color as a service mark used on a variety of items not viewed simultaneously by purchasers, e.g., stationery, uniforms, pens, signs, shuttle buses, store awning, and walls of the store, submits a drawing that displays the mark as a solid-colored square with a dotted peripheral outline, the application will receive a filing date. However, the examining attorney will generally require the applicant to submit a single amended drawing showing how the mark is used in connection with the services. The applicant must also submit a detailed description of the mark identifying the color and describing its placement.Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124. SeeTMEP §1202.05(c)regarding color as a separable element.
  • The commercial impression of a color may change depending on the object on which it is applied. SeeThrifty, 274 F.3d at 1353, 61 USPQ2d at 1124.
1202.05(d)(iii) Amendment of Drawings of Color Marks

Because color marks are comprised solely of the color as applied to the product or product package, in the manner depicted on the drawing and explained in the description of the mark, amending the color of the proposed mark will always change the commercial impression of the mark. Thus, the amendment of any color in a color mark is a prohibited material alteration. Similarly, the amendment of the color mark to show the same color on a different object is also, generally, a material alteration, e.g., an amendment of a drawing of a blue hammer to a blue saw is a material alteration.

1202.05(d)(iv) Drawings for Marks Including Both Color and Words or Design

Sometimes, a product or advertisement for a service will include both color and words or a design. For example, the surface of a toaster might be green, with the letters “ABC” and a design displayed on the toaster. In this situation, the applicant must decide whether to seek registration for the color green used on toasters, the letters “ABC” with or without the design, the design alone, or some combination of these elements. If applicant only seeks registration for the use of the color, no word or design elements should appear on the drawing.

1202.05(e) Written Descriptions of Color Marks

The drawing of a proposed color mark must be supplemented with: (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the “Description of the Mark” field naming the color(s) and describing where the color(s) appear(s) and how they are used on the mark.37 C.F.R. §2.52(b)(1). See TMEP §§807.07–807.07(g) for color mark drawings and808–808.03(f) for description of the mark.

The description of the mark must be clear and specific, use ordinary language, and identify the mark as consisting of the particular color as applied to the goods or services. If the color is applied only to a portion of the goods, the description must indicate the specific portion. Similarly, if the mark includes gradations of color, the description should so indicate. If the applicant is claiming a shade of color, the shade must be described in ordinary language, for example, “maroon,” “turquoise,” “navy blue,” “reddish orange.” This is required even if the applicant also describes the color using a commercial coloring system.

The applicant may not amend the description of the mark if the amendment is a material alteration of the mark on the drawing filed with the original application.37 C.F.R. §2.72.SeeIn re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001).Cf. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). SeeTMEP §§807.14–807.14(f)regarding material alteration.

The description of a color mark must be limited to a single mark, because only one mark can be registered in a single application.See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999);In re Hayes, 62 USPQ2d 1443 (TTAB 2002) . See TMEP §§807.01 regarding drawing must be limited to a single mark and1202.05(c) regarding color as a separable element.

1202.05(f) Specimens for Color Marks

An application under §1 of the Trademark Act must be supported by a specimen that shows use of the proposed mark depicted on the drawing. Therefore, an applicant who applies to register a color mark must submit a specimen showing use of the color, either with a §1(a) application or with an allegation of use (i.e., either an amendment to allege use under15 U.S.C. §1051(c)  or a statement of use under15 U.S.C. §1051(d)),  in a §1(b) application. If a black-and-white specimen is submitted, the examining attorney will require a substitute specimen displaying the proposed color mark. SeeTMEP §904.02(c)(ii).

See TMEP §§904.03–904.07(b) regarding trademark specimens and1301.04–1301.04(d) regarding service mark specimens.

1202.05(g) Special Considerations for Service Mark Applications

Although the applicant inIn re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001), argued that it applied for the color blueper se as a service mark, the Court determined that the drawing controlled, such that the application was for the color blue applied to a building. Although the Court did not reach the issue of colorper se as a service mark, the Court acknowledged the special evidentiary problem associated with showing acquired distinctiveness in this context.Id. at 1353, 61 USPQ2d at 1124 (“[E]vidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects (e.g., blue vehicle rental centers), but not for other objects (e.g., blue rental cars).”). Accordingly, any claim to colorper se must be specific as to use and include evidence of acquired distinctiveness for each claimed use.

1202.05(h) Color Marks in §1(b) Applications

A color mark can never be inherently distinctive.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citingQualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995));In re Forney Indus., 127 USPQ2d 1787, 1793 (TTAB 2018) (holding a color mark consisting of multiple colors not inherently distinctive);TMEP §1202.05(a). Therefore, the examining attorney must refuse to register a color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, or does not function as a service mark under §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127.

The issue of whether the proposed color mark is functional requires consideration of the manner in which the mark is used. Generally, no refusal on these grounds will be issued in a §1(b) application until the applicant has submitted specimen(s) of use with an allegation of use (i.e., either an amendment to allege use under15 U.S.C. §1051(c)  or a statement of use under15 U.S.C.  §1051(d)).See TMEP §§1102.01,1202.02(d),1202.03(e), and1202.05(b). The specimen(s) provide a better record upon which to determine the registrability of the mark. In appropriate cases, the examining attorney will bring the potential refusal to the applicant’s attention in the initial Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.

1202.05(i) Color Marks in §44 or §66(a) Applications

A color mark can never be inherently distinctive.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citingQualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995));In re Forney Indus., 127 USPQ2d 1787, 1792-93 (TTAB 2018);TMEP §1202.05(a). Therefore, the examining attorney must refuse to register a proposed color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, or does not function as a service mark under §§1, 2, 3, and 45,15 U.S.C. §§10511052,1053, and1127.

If the record indicates that the proposed mark is functional, the examining attorney should issue a refusal of registration on the Principal Register under §2(f), or on the Supplemental Register.SeeTMEP §§1202.02(e),1202.03(e), and1202.05(b).NOTE:A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances.15 U.S.C. §1141h(a)(4);37 C.F.R. §§2.47(c) and2.75(c).

1202.06 Goods in Trade

Section 45 of the Trademark Act,15 U.S.C. §1127,  defines a “trademark” as a “word, name, symbol, or device, or any combination thereof” that is used or intended to be used in commerce “toidentify and distinguish his or her goods (emphasis added).” Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be “goods in trade.” Incidental items that an applicant uses in conducting its business (such as letterhead, invoices, reports, boxes, and business forms), as opposed to items sold or transported in commerce for use by others, are not “goods in trade.”See In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (finding that reports are not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered);In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1162-63 (TTAB 2013) (finding that applicant’s annual report does not constitute a “good in trade,” but rather “is a common and necessary adjunct to the rendering of applicant's investment management and research services, that is, it is one of the means through which it provides investment services”);In re Ameritox Ltd., 101 USPQ2d 1081, 1085 (TTAB 2011) (finding no evidence that applicant was engaged in selling printed reports apart from its laboratory testing services and that the reports were part and parcel of the services);In re MGA Entm’t, Inc., 84 USPQ2d 1743 (TTAB 2007) (stating that applicant’s trapezoidal cardboard boxes for toys, games, and playthings held to be merely point of sale containers for applicant’s primary goods and not separate goods in trade, where there was no evidence that applicant is a manufacturer of boxes or that applicant is engaged in selling boxes as commodities in trade);In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972) (finding that reports and printouts not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service);Ex parte Bank of Am. Nat’l Trust and Sav. Ass’n, 118 USPQ 165 (Comm’r Pats. 1958) (mark not registrable for passbooks, checks, and other printed forms, where forms are used only as "necessary 'tools' in the performance of [banking services], and [applicant] is not engaged either in printing or selling forms as commodities in trade.").

The determination of whether an applicant's identified goods comprise independent goods in trade, or are merely incidental to the applicant's services, is a factual determination to be made on a case-by-case basis.In re Thomas White Int’l, Ltd. 106 USPQ2d at 1161 (citingLens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012)). Factors to consider include “whether [applicant's good]: (1) is simply the conduit or necessary tool useful only to obtain applicant’s services; (2) is so inextricably tied to and associated with the service as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the services.”In re Thomas White Int’l, Ltd., 106 USPQ2d at 1162 (citingLens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676). None of these factors is dispositive.Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676.

1202.06(a) Goods Must Have Utility to Others

Affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on “goods.” While a formal sale is not always necessary, items sold or transported in commerce are not “goods in trade” unless they have utility to others as the type of product named in the trademark application.

Example: Holiday greeting cards sent by a law firm to its clients are not “goods,” where applicant is merely sending its own cards through the mail as a holiday greeting, and the cards are not suitable for use by the recipients as a greeting card.

See Gay Toys, Inc. v. McDonald’s Corp., 585 F.2d 1067, 199 USPQ 722 (C.C.P.A. 1978) (plaster mockup of toy truck not goods in trade where there is no evidence the mockup is actually used as a toy);Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) ,aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (mark not registrable for games, where purported games are advertising flyers used to promote applicant’s services and have no real utilitarian function or purpose as games);In re Douglas Aircraft Co., 123 USPQ 271 (TTAB 1959) (books, pamphlets, and brochures that serve only to explain and advertise the goods in which applicant deals are not “goods”).Cf. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (ball point pens used to promote applicant’s tools are goods in trade, where they have a utilitarian function and purpose, and have been sold to applicant’s franchised dealers and transported in commerce under mark);In re United Merchants & Mfrs., Inc., 154 USPQ 625 (TTAB 1967) (calendar used to promote applicant’s plastic film constitutes goods in trade, where calendar has a utilitarian function and purpose in and of itself, and has been regularly distributed in commerce for several years).

InIn re MGA Entm’t, Inc., 84 USPQ2d 1743, 1746 (TTAB 2007) , the Board rejected applicant’s argument that trapezoidal cardboard boxes for toys, games, playthings, puzzles, and laptop play units have use beyond holding the goods at the point of sale, in that the laptop play-unit box functions as an ongoing carrying case for the unit, and the puzzle box may be used to store puzzle pieces when not in use. Finding the boxes to be merely point-of-sale containers for the primary goods and not separate goods in trade, the Board stated that “the mere fact that original boxes or packaging may be used to store products does not infuse such boxes or packaging with additional utility such that they constitute goods in trade,” and that there is neither any indication that the laptop computer boxes are labeled as a carrying case nor any evidence that applicant promotes the boxes as carrying cases or that children actually use them as carrying cases.

1202.06(b) Registration Must Be Refused if Trademark Not Used on Goods in Trade

If the specimen, identification of goods, or other evidence in the record indicate that the applicant uses the proposed mark only on items incidental to conducting its own business, as opposed to items intended to be used by others, the examining attorney must refuse registration on the Principal Register under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, on the ground that the proposed mark is not used on “goods in trade.”

If a mark is not used on “goods in trade,” it is not registrable on the Principal Register under §2(f) of the Trademark Act,15 U.S.C. §1052(f),  or on the Supplemental Register.

If some but not all of the items listed in the identification of goods are found not to be “goods in trade,” it is not necessary to refuse registration of the entire application, but the examining attorney must require that these items be deleted from the identification of goods before approving the mark for publication or registration.

1202.06(c) Goods in Trade in §1(b), §44, and §66(a) Applications

In an intent-to-use application under §1(b) of the Trademark Act,15 U.S.C. §1051(b),  the question of whether a proposed mark is used on goods in trade usually does not arise until the applicant files an allegation of use (i.e., either an amendment to allege use under15 U.S.C. §1051(c)  or a statement of use under15 U.S.C. §1051(d))  because this issue is based on the manner in which the mark is used. However, if the identification of goods in a §1(b) application includes items that do not appear to be goods in trade, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the record indicates that the mark will not be used on goods in trade, without the need to await consideration of the specimen(s), the examining attorney may issue the refusal prior to the filing of the allegation of use.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a refusal based on the lack of use on goods in trade where the record clearly indicates that the mark will not be used on goods in trade.Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).

1202.07 Marks That Identify Columns or Sections of Publications
1202.07(a) Marks That Identify Columns or Sections of Printed Publications

A column, section, or supplement of a printed publication is normally not considered to be separate “goods” or “goods in trade,” unless it is sold, syndicated, or offered for syndication separate and apart from the larger publication in which it appears.In re Broad. Publ'ns,, 135 USPQ 374 (TTAB 1962) ;Ex parte Meredith Publ'g, 109 USPQ 426 (Comm’r Pats. 1956). This is true even of a removable or separable “pullout” section of a newspaper or other publication. InMeredith, the issue was analyzed as follows:

The basic question is whether or not, under the circumstances of use, the section title is a name adopted and used by the publisher to identify his goods and distinguish them from those of others. The “goods” actually are magazines-not sections of magazines. When the magazine is purchased, the purchaser receives the sections whether he wants them or not, and it is doubtful that magazine readersordinarily purchase a magazine merely to receive a section of it, or think of a magazine merely in terms of a section title. Sections of magazines are not in and of themselves articles of commerce other than as a part of an integrated whole; and we must therefore be concerned with whether a section title actually identifies and distinguishes, and if so, what it distinguishes. Under these circumstances it becomes necessary to ask: Was the mark adopted to identify a section of applicant’s magazine and distinguish it from sections of other publishers’ magazines, or was it adopted to distinguish one section of applicant’s magazine from the other sections of its magazine?Ordinarily, it is the latter (emphasis in original).

109 USPQ at 426.

The examining attorney may accept the statement of the applicant or applicant’s attorney that the column is syndicated. It is not necessary to set this forth in the identification of goods.

1202.07(a)(i) Syndicated Columns and Sections

Columns or sections that are separately sold, syndicated, or offered for syndication do constitute goods in trade. A mark that identifies a column or section that is separately syndicated or offered for syndication is registrable on the Principal Register without resort to §2(f) of the Trademark Act,15 U.S.C. §1052(f),  if registration is not barred by other sections of the Act.

1202.07(a)(ii) Non-Syndicated Columns and Sections

A column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication is not, in and of itself, considered to be separate goods in trade. Therefore, where the specimen, identification of goods, or other evidence in the record indicates that the mark identifies a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication, the examining attorney should refuse registration on the Principal Register under §§1, 2, and 45 of the Trademark Act;15 U.S.C. §§10511052, and1127, on the ground that the mark is not used on separate goods in trade.

Marks that identify non-syndicated columns or sections of printed publications, downloadable publications, or publications recorded on electronic media are registrable on the Principal Register under §2(f) of the Trademark Act,15 U.S.C. §1052(f),  if the column or section is shown to have acquired separate recognition and distinctiveness. An applicant who seeks registration on the Principal Register bears the burden of establishing, through evidence of promotion, long use, advertising expenditures, and breadth of distribution or sales figures, that the public has come to recognize the proposed mark as an indicator of source.

The evidence of acquired distinctiveness must show that the column or section title is used and promoted to distinguish applicant’s column or section from the columns or sections of other publishers’ publications, rather than merely to distinguish applicant’s column or section from other columns or sections of applicant’s publication.Metro Publ'g v. San Jose Mercury News, 987 F.2d 637, 25 USPQ2d 2049 (9th Cir. 1993);In re Broad. Publ'ns, 135 USPQ 374 (TTAB 1962).

The amount of evidence needed to establish distinctiveness must be evaluated by the examining attorney on a case-by-case basis, in light of the type of column or section. If the mark identifies a removable or pull-out section, a lesser degree of evidence might be required to establish distinctiveness. Of course, the amount of evidence needed to establish distinctiveness in any particular case will also vary depending on the strength or weakness of the mark. SeeTMEP §§1212–1212.06(e)(iv) regarding evidence of distinctiveness.

Marks that identify non-syndicated columns or sections of printed publications, downloadable publications, or publications recorded on electronic media, but have not yet acquired distinctiveness under §2(f) of the Act, are registrable on the Supplemental Register in applications under §1 or §44 of the Trademark Act, if registration is not barred by other sections of the Act.Ex parte Meredith Publ'g, 109 USPQ 426 (Comm’r Pats. 1956).

1202.07(a)(iii) Marks That Identify Columns and Sections of Printed, Downloadable, or Recorded Publications in §1(b), §44, and §66(a) Applications

Since a refusal to register a mark that identifies a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media is based on whether the column or section is separately sold, syndicated, or offered for syndication, the issue ordinarily does not arise in an intent-to-use application under §1(b) of the Trademark Act,15 U.S.C. §1051(b),  until the applicant has filed an allegation of use (i.e., either an amendment to allege use under15 U.S.C. §1051(c)  or a statement of use under15 U.S.C. §1051(d)).  However, if the identification of goods suggests that the mark is intended to be used to identify a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication, the potential refusal on the ground that the proposed mark is not used on separate goods in trade should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant prior to the filing of the allegation of use, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark will identify a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold or syndicated, the examining attorney may make the refusal prior to the filing of the allegation of use.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to refuse registration because the mark is not used on goods in trade where the record indicates that the mark will identify a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication.Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).

1202.07(b) Marks That Identify Columns and Sections of Online Publications

Providing an online non-downloadable publication is considered a service rather than a product. Therefore, refusal of registration on the ground that the proposed mark is not used on goods in trade is inappropriate. Unlike a printed, downloadable, or recorded column or section, an online non-downloadable column or section can be accessed directly and can exist independent of any single publication.See Ludden v. Metro Weekly, 8 F. Supp. 2d 7, 14, 47 USPQ2d 1087, 1093 (D.D.C. 1998) . Therefore, a mark used in connection with the service of providing an online non-downloadable column or section is registrable on the Principal Register without resort to §2(f) of the Trademark Act,15 U.S.C. §1052(f),  if registration is not barred by other sections of the Act.

1202.08 Title of a Single Creative Work

The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register.Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier");In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958) , ("A book title . . . identifies a specific literary work . . . and is not associated in the public mind with the publisher, printer or bookseller . . . .");In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (holding the title of a live theater production unregistrable);In re Hal Leonard Publ'g Corp., 15 USPQ2d 1574 (TTAB 1990) (holding INSTANT KEYBOARD, as used on music instruction books, unregistrable as the title of a single work);In re Appleby, 159 USPQ 126 (TTAB 1968) (holding the title of single phonograph record, as distinguished from a series, does not function as mark).

As noted inIn re Cooper, there is a compelling reason why the name or title of a book cannot be a trademark, which stems from copyright law. Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name.G. & C. Merriam Co. v. Syndicate Publ’g Co., 237 U.S. 618, 622 (1915);In re Cooper, 254 F.2d at 616, 117 USPQ at 400;Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1144 (TTAB 2011). Moreover, if the work sought to be registered is not copyrighted, the public may copy it at once and would be as clearly entitled to call it by its name.In re Cooper, 254 F.2d at 616, 117 USPQ at 400.

SeeTMEP §1301.02(d) regarding the titles of radio and television programs.

When a title, or a portion of a title, of a single creative work appears in a composite mark with registrable matter, the title must be disclaimed, if otherwise appropriate, as an unregistrable component of the mark, unless the evidence shows use of the title on a series of creative works. SeeTMEP §1213.03(a) regarding disclaimer of unregistrable components.

1202.08(a) What Constitutes a Single Creative Work

Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. Materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs, and films are usually single creative works. Creative works that are serialized, i.e., the mark identifies the entire work but the work is issued in sections or chapters, are still considered single creative works. A theatrical performance is also a single creative work, because the content of the play, musical, opera, or similar production does not significantly change from one performance to another.In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) . A cornerstone was considered a single creative work in an application for registration of FREEDOM STONE for “building stones used as landmarks or cornerstones,” where the record showed that the proposed mark would identify only one building stone used as a landmark or cornerstone, to serve as the cornerstone for the Freedom Tower that is to be erected at the World Trade Center site in New York City.In re Innovative Cos., LLC., 88 USPQ2d 1095, 1102 (TTAB 2008) .

1202.08(b) What Does Not Constitute a Single Creative Work

Generally, any creative work will not be considered a single creative work if evidence exists that it is part of a series (e.g., the work is labeled “volume 1,” “part 1,” or “book 1”) or is a type of work in which the content changes with each issue or performance. For example, single creative works do not include periodically issued publications, such as magazines, newsletters, comic books, comic strips, guide books, and printed classroom materials, because the content of these works changes with each issue.

A book with a second or subsequent edition in which the content changessignificantly is not regarded as a single creative work. For example, a statement on the jacket cover that a cookbook is a “new and revised” version would indicate that it includes significant revisions. However, a new edition issued to correct typographical errors or that makes only minor changes is not considered to be a new work. Live performances by musical bands, television and radio series, and educational seminars are presumed to change with each presentation and, therefore, are not single creative works.

Computer software, computer games, coloring books, and activity books are not treated as single creative works.

The examining attorney must determine whether changes in content are significant based on any evidence in the application or record. The examining attorney may conduct additional research using the applicant’s website, Internet search engines, or Nexis® databases (and enter a Note to the File in the record, if appropriate). In addition, the examining attorney may issue a request for information under37 C.F.R. §2.61(b).

1202.08(c) Complete Title of the Work – Evidence of a Series

The name of a series of books or other creative works may be registrable if it serves to identify and distinguish the source of the goods. An applicant must submit evidence that the title is used on at least two different creative works.In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013) . A series is not established when only the format of the work is changed, that is, the same title used on a printed version of a book and a recorded version does not establish a series.See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143 (TTAB 2011) (finding that a program recorded on both a VHS tape and a DVD were the same creative work, and that the addition of minor enhancements in the DVD did not transform this single work into a series). Likewise, use of the title on unabridged and abridged versions of the same work, or on collateral goods such as posters, mugs, bags, or t-shirts does not establish a series. Similarly, minimal variations of the same theatrical performance do not create a series.See In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) .

For example, if an application for the mark HOW TO RETIRE EARLY for “books” is refused because the specimen shows the mark used on a single creative work, the applicant may submit copies of other book covers showing use of the mark HOW TO RETIRE EARLY and any additional evidence to establish that the book is published each year with different content. It is not necessary to show that the mark was used on the other works in the series prior to the filing date of the application or the allegation of use. However, evidence that the applicant intends to use the mark on a series is insufficient.

1202.08(d) Portion of a Title of the Work

A portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria:

  • (1) It creates a separate commercial impression apart from the complete title;
  • (2) It is used on series of works; and
  • (3) It is promoted or recognized as a mark for the series.
1202.08(d)(i) Mark Must Create a Separate Commercial Impression

When registration is sought for a portion of a title, the mark must be used as a separable element on the specimen. The examining attorney should consider the size, type font, color, and any separation between the mark and the rest of the title when making this determination.In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) ("[T]he words THE MAGIC SCHOOL BUS are prominently displayed on the books' covers, and are in a larger, bolder style of type and different color from the remainder of each title. Moreover, the words appear on a separate line above the remainder of each title."). If the portion of the title sought to be registered is not separable, the examining attorney must refuse registration on the ground that the mark is not a substantially exact representation of the mark as it appears on the specimen.SeeTMEP §807.12(d).

1202.08(d)(ii) Establishing a Series When the Mark is a Portion of the Title

An applicant may establish that the portion of the title of a creative work is used on a series by submitting more than one book cover or CD cover with the mark used in all the titles. For example, if the mark on the drawing is “THE LITTLE ENGINE” and on the book it appears as “THE LITTLE ENGINE THAT WENT TO THE FAIR,” registration should be refused because the mark is a portion of a title of a single work.See In re Nat’l Council Books, Inc., 121 USPQ 198, 199 (TTAB 1959) (finding “NATIONAL” to be a portion of the title “NATIONAL GARDEN BOOK”). To establish use on a series, the applicant may submit additional book covers showing use of, e.g., “THE LITTLE ENGINE GOES TO SCHOOL,” and “THE LITTLE ENGINE AND THE BIG RED CABOOSE.”

1202.08(d)(iii) Evidence that the Portion of the Title is Promoted or Recognized as a Mark

When a mark is used merely as aportion of the title of a creative work, the applicant has a heavier burden in establishing that the portion for which registration is sought serves as a trademark for the goods.The mere use of the same words in more than one book title is insufficient to establish the words as a mark for a series. The applicant must show that the public perceives the portion sought to be registered as a mark for the series.In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) (holding THE MAGIC SCHOOL BUS used as a portion of the book titles in “THE MAGIC SCHOOL BUS AT THE WATERWORKS” and “THE MAGIC SCHOOL BUS INSIDE THE EARTH,” functions as a mark for a series, because the record contained evidence of repeated use of the designation displayed prominently on book covers, as well as evidence that applicant promoted THE MAGIC SCHOOL BUS as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).

1202.08(e) Identification of Goods/Services

Identification Need Not Reflect Use on a Series. The identification of goods/services need not reflect that the applicant is using the title on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.

Creative Works in a List of Goods or Services. A refusal of registration on the ground that the mark merely identifies the title of a single creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information, or if the examining attorney learns from another source, that the mark identifies the title of a single creative work, the examining attorney must issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes.SeeTMEP §718.02(a).

Example: An application for “newspapers, books in the field of finance, pencils, and coloring books” would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified the title of the “books in the field of finance.” The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal.

1202.08(f) Title of a Single Work in §1(b), §44, and §66(a) Applications

The issue of whether a proposed mark is the title of a single creative work usually is tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act,15 U.S.C. §1051(b),  until the applicant has submitted a specimen with an allegation of use under §1(c) or §1(d) of the Act,15 U.S.C. §1051(c)  or(d).

However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark is the title of a single creative work, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark constitutes the title of a single work, the examining attorney may make the refusal prior to the filing of the allegation of use.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify the title of a single work.Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application).

1202.09 Names of Artists and Authors
1202.09(a) Names and Pseudonyms of Authors and Performing Artists

Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, if the mark is used solely to identify the writer or the artist.See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983);In re Arnold, 105 USPQ2d 1953, 1957-60 (TTAB 2013) ;In re First Draft, Inc. 76 USPQ2d 1183, 1190 (TTAB 2005) ;In re Peter Spirer, 225 USPQ 693, 695 (TTAB 1985) . Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.

However, the name of the author or performer may be registered if:

  • (1) It is used on a series of written or recorded works; and
  • (2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist.

In re Arnold, 105 USPQ2d at 1958.

If the applicant cannot show a series, or can show that there is a series but cannot show that the name identifies the source of the series, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act. These types of marks may not be registered on the Principal Register under §2(f).

See alsoTMEP §1301.02(b) regarding personal names as service marks.

1202.09(a)(i) Author or Performer’s Name – Evidence of a Series

In an application seeking registration of an author’s or performer’s name, the applicant must provide evidence that the mark appears on at least two different works. Such evidence could include copies of multiple book covers or multiple CD covers that show the name sought to be registered.See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983). A showing of the same work available in different media, i.e., the same work in both printed and/or recorded or downloadable format, does not establish a series.

The identification of goods need not reflect that the applicant is using the name on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.

1202.09(a)(ii) Evidence that the Name is a Source Identifier

The use of the author’s or performer’s name on a series of works does not, in itself, establish that the name functions as a mark. The record must also show that the name serves as more than a designation of the writer or performer, i.e., that it also serves to identify the source of the series.SeeIn re Arnold, 105 USPQ2d 1953, 1959-60 (TTAB 2013) (holding BLATANCY fails to function as a mark because it merely identifies the name of a performer featured on applicant’s musical recordings, and finding the evidence relating to control over the mark and the nature and quality of the goods conflicting and of uncertain meaning);In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005) (holding pseudonym FERN MICHAELS identifies only the author and does not function as a mark to identify and distinguish a series of fictional books because the “evidence of promotion" was "indirect and rather scant,” despite applicant’s showing that the name had been used as an author's name for 30 years; that 67 separate books had been published under the name, and approximately 6 million copies had been sold; that the book jackets listed the titles of other works by Fern Michaels and promoted her as a bestselling author; that the author had been inducted into the New Jersey Literary Hall of Fame; and that there was a www.fernmichaels.com website);In re Chicago Reader Inc., 12 USPQ2d 1079, 1080 (TTAB 1989) (holding CECIL ADAMS, used on the specimen as a byline and as part of the author’s address appearing at the end of a column, merely identifies the author and does not function as a trademark for a newspaper column).

A showing that the name functions as a source identifier may be made by submitting evidence of either: (1) promotion and recognition of the name as a source indicator for the series (seeTMEP §1202.09(a)(ii)(A)); or (2) the author’s or performer’s control over the name and quality of his or her works in the series (see TMEP §1202.09(a)(ii)(B)).In re Arnold, 105 USPQ2d at 1958.

1202.09(a)(ii)(A) Promotion and Recognition of the Name

To show that the name of an author or performing artist has been promoted and is recognized as indicating the source of a series of written works, the applicant could submit copies of advertising that promotes the name as the source of a series, copies of third-party reviews showing others’ use of the name to refer to a series of works, or evidence showing the name used on a website associated with the series of works.See In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005) , citingIn re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) (holding THE MAGIC SCHOOL BUS functions as a mark for a series of books, where the record contained evidence of use of the designation displayed prominently on many different book covers, as well as evidence that applicant promoted the term as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).

1202.09(a)(ii)(B) Control over the Nature and Quality of the Goods

Alternatively, an applicant may show that the name of an author or performing artist functions as a source indicator by submitting documentary evidence that the author/performer controls the quality of his or her distributed works and controls the use of his or her name. Such evidence would include license agreements and other documentary or contractual evidence.See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983) (holding the name of the musical group ABBA functions as a mark for sound recordings where a license agreement showed that the owner of the mark, ABBA, controlled the quality of the goods, and other contractual evidence showed that the owner also controlled the use of the name of the group).

InIn re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005), the Board found that the applicant failed to meet thePolar Music test, noting that:

[W]e have neither any evidence bearing on [the question of applicant’s control over the quality of the goods] nor even any representations by counsel regarding such matters. This is in stark contrast toPolar Music, wherein there was detailed information and documentary (i.e., contractual) evidence regarding the relationship between the performing group ABBA and its “corporate entity,” as well as evidence of the control such corporation maintained in dealings with a manufacturer and seller of its recordings in the United States.

If the applicant maintains control over the quality of the goods because the goods are published or recorded directly under the applicant’s control, the applicant may submit a verified statement that “the applicant publishes or produces the goods and controls their quality.”In re Arnold, 105 USPQ2d 1953, 1958 (TTAB 2013) .

1202.09(a)(iii) Names of Authors and Performing Artists in §1(b), §44, and §66(a) Applications

The issue of whether a proposed mark identifies only an author or performing artist is usually tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act,15 U.S.C. §1051(b),  until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act,15 U.S.C. §1051(c)  or(d).

In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only an author or performing artist, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only an author or performing artist, the examining attorney may make the refusal prior to the filing of the allegation of use.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record, even without a specimen, reflects that the proposed mark identifies only an author or performing artist.Cf.In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application).

1202.09(b) Names of Artists Used on Original Works of Art

An artist’s name or pseudonym affixed to an original work of art may be registered on the Principal Register without a showing that the name identifies a series. Original works of art includes paintings, murals, sculptures, statues, jewelry, and like works that the artist personally creates. InIn re Wood, 217 USPQ 1345, 1350 (TTAB 1983), the Board held that the pseudonym YSABELLA affixed to an original work of art functioned as a mark. The Board has expressly limited this holding to cases involving original works of art, stating inWood that “[l]est we be accused of painting with too broad a brush, we hold only that an artist’s name affixed to an original work of art may be registered as a mark and that here applicant’s name, as evidenced by some of the specimens of record [the signature of the artist on a work of art], functions as a trademark for the goods set forth in the application.” InIn re First Draft, 76 USPQ2d 1183, 1190 (TTAB 2005) , the Board again stated that “Wood is limited in its application to cases involving original works of art and there is nothing to indicate that the panel deciding that case considered novels to be encompassed by the phrase original works of art.”

1202.10 Names and Designs of Characters in Creative Works

Marks that merely identify a character in a creative work,whether used in a series or in a single work, are not registrable.In re Scholastic Inc., 223 USPQ 431, 431 (TTAB 1984) (holding THE LITTLES, used in the title of each book in a series of children's books, does not function as a mark where it merely identifies the main characters in the books).Cf.In re Caserta, 46 USPQ2d 1088, 1090-91 (TTAB 1998) (holding FURR-BALL FURCANIA, used as the principal character in a single children's book, does not function as a mark even though the character's name appeared on the cover and every page of the story);In re Frederick Warne & Co., 218 USPQ 345, 347-48 (TTAB 1983) (holding an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark).

To overcome a refusal of registration on the ground that the proposed mark merely identifies a character in a creative work, the applicant may submit evidence that the character name does not merely identify the character in the work. For example, the applicant may submit evidence showing use of the character name as a mark on the spine of the book, or on displays associated with the goods, in a manner that would be perceived as a mark.

A refusal of registration on the ground that the mark merely identifies a character in a creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information or if the examining attorney learns from another source that the mark identifies a character in a creative work and there are multiple items in the identification, the examining attorney should issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes.SeeTMEP §718.02(a).

Example: An application for “children’s books, pencils, and coloring books” would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified a character in the children's books. The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal.

1202.10(a) Names and Designs of Characters in Creative Works in §1(b), §44, or §66(a) Applications

The issue of whether a proposed mark identifies only the name or design of a particular character is tied to use of the mark, as evidenced by the specimen. Therefore, unless the record, even without a specimen, reflects that the proposed mark identifies only the name or design of a character, generally no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act,15 U.S.C. §1051(b),  until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act,15 U.S.C. §1051(c)  or(d). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only a particular character, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only the name or design of a character, the examining attorney may make the refusal prior to the filing of the allegation of use.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify only the name or design of a particular character.Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).

SeeTMEP §1301.02(b) regarding names of characters or personal names as service marks.

1202.11 Background Designs and Shapes

Common geometric shapes and background designs that are not sufficiently distinctive to create a commercial impression separate from the word and/or design marks with which they are used, are not regarded as indicators of origin absent evidence of distinctiveness of the design alone.SeeIn re Benetton Group S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) ;In re Anton/Bauer, Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) ;In re Wendy’s Int’l, Inc., 227 USPQ 884, 885 (TTAB 1985) ;In re Haggar Co., 217 USPQ 81, 83-84 (TTAB 1982) . As stated inIn re Chem. Dynamics, Inc., 839 F.2d 1569, 1570, 5 USPQ2d 1828, 1829 (Fed. Cir. 1988) (citations omitted), “'[a] background design which is always used in connection with word marks must create a commercial impression on buyers separate and apart from the word marks for the design to be protectible as a separate mark.' In deciding whether the design background of a word mark may be separately registered, the essential question is whether or not the background material is or is not inherently distinctive…. If the background portion is inherently distinctive, no proof of secondary meaning need be introduced; if not, such proof is essential.”

An applicant may respond to a refusal to register an application for a common geometric shape or background design by submitting evidence that the subject matter has acquired distinctiveness under §2(f) of the Trademark Act,15 U.S.C. §1052(f).  The examining attorney should scrutinize any submission that asserts distinctiveness solely on the basis of a statement of substantially exclusive and continuous use for five years to determine whether it truly establishes that the subject matter is perceived as a trademark by the purchasing public. The examining attorney may continue to refuse registration if he or she believes that the applicant’s assertion does not establish that the matter is perceived as a trademark. The applicant may submit additional evidence to establish distinctiveness.SeeTMEP §§1212–1212.10.

In the following cases, the evidence of distinctiveness was insufficient:Benetton, 48 USPQ2d at 1217 (holding green rectangular background design not inherently distinctive; evidence of acquired distinctiveness insufficient);Anton/Bauer, 7 USPQ2d at 1383 (holding parallelogram designs used as background for word marks not inherently distinctive; evidence of record insufficient to establish acquired distinctiveness pursuant to §2(f)); In re Kerr-McGee Corp., 190 USPQ 204, 207 (TTAB 1976) (affirming refusals to register escutcheon design used as a frame or border for words, under §2(f)).

In the following cases, the evidence of distinctiveness was sufficient: In re Schenectady Varnish Co., 280 F.2d 169, 171, 126 USPQ 395, 397 (C.C.P.A. 1960) (finding evidence of record sufficient to show acquired distinctiveness of the design alone as a trademark for synthetic resins where use of applicant’s design of a cloud and a lightning flash was always used as a background for the word “SCHENECTADY” );In re Raytheon Co., 202 USPQ 317, 319-20 (TTAB 1979) (finding light-colored oval within black rectangular carrier not inherently distinctive; evidence of record sufficient to establish acquired distinctiveness).

1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants)

Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or seed by which such variety is known to the U.S. consumer.See,e.g., In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006). These names can consist of a numeric or alphanumeric code or can be a “fancy” (arbitrary) name. The terms “varietal” and “cultivar” may have slight semantic differences but pose indistinguishable issues and are treated identically for trademark purposes.

Subspecies are types of a particular species of plant or seed that are members of a particular genus. For example, all maple trees are in the genusAcer. The sugar maple species is known asAcer saccharum, while the red maple species is calledAcer rubrum. In turn, these species have been subdivided into various cultivated varieties that are developed commercially and given varietal or cultivar names that are known to U.S consumers.

A varietal or cultivar name is used in a plant patent to identify the variety. Thus, even if the name was originally arbitrary, it “describe[s] to the public a [plant] of a particular sort, not a [plant] from a particular [source].”Dixie Rose Nursery v. Coe, 131 F.2d 446, 447, 55 USPQ 315, 316 (D.C. Cir. 1942). It is against public policy for any one supplier to retain exclusivity in a patented variety of plant, or the name of a variety, once its patent expires.Id.;accordPennington Seed, 80 USPQ2d at 1762.

Market realities and lack of laws concerning the registration of varietal and cultivar names have created a number of problems in this area. Some varietal names are not attractive or easy to remember by the public. As a result, many arbitrary terms are used as varietal names. Problems arise when trademark registration is sought for varietal names, when arbitrary varietal names are thought of as being trademarks by the public, and when terms intended as trademarks by plant breeders become generic through public use. These problems make this a difficult area for the examining attorney in terms of gathering credible evidence and knowing when to make refusals.

Whenever an application is filed to register a mark containing wording for live plants, agricultural seeds, fresh fruits, or fresh vegetables, a search using Internet search engines does not by itself suffice to assess whether the mark is a varietal or cultivar. The examining attorney must submit a request to the Trademark Law Library to undertake an independent investigation of any evidence that would support a refusal to register, using sources of evidence that are appropriate for the particular goods specified in the application (e.g., laboratories and repositories of the United States Department of Agriculture, plant patent information from the USPTO, a variety name search of plants certified under the Plant Variety Protection Act listed atwww.ars-grin.gov/npgs/searchgrin.html). Before any mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables is approved for publication, a Note to the File must be added to the record indicating “Law Library varietal search.” In addition, the examining attorney also may inquire of the applicant whether the term has ever been used as a varietal name, and whether such name has been used in connection with a plant patent, a utility patent, or a certificate for plant-variety protection.See37 C.F.R. §2.61(b).

If the examining attorney determines that wording sought to be registered as a mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables comprises a varietal or cultivar name, then the examining attorney must refuse registration, or require a disclaimer, on the ground that the matter is the varietal name of the goods and does not function as a trademark under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127.SeePennington Seed, 80 USPQ2d at 1761-62 (upholding the USPTO’s long-standing precedent and policy of treating varietal names as generic, and affirming refusal to register REBEL for grass seed because it is the varietal name for the grass seed as evidenced by its designation as the varietal name in applicant’s plant variety protection certificate);Dixie Rose Nursery, 55 USPQ at 316 (holding TEXAS CENTENNIAL, although originally arbitrary, has become the varietal name for a type of rose;In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1035 (TTAB 1979) (affirming the refusal to register COMMANDER YORK for apple trees because it is the varietal name for the trees as evidenced by use in applicant’s catalogue);In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963) (upholding the refusal to register CHIEF BEMIDJI as a trademark because it is the varietal name for a strawberry plant and noting that large expenditures of money does not elevate the term to a trademark; In re Cohn Bodger & Sons Co., 122 USPQ 345, 346 (TTAB 1959) (holding BLUE LUSTRE merely a varietal name for petunia seeds as evidenced by applicant’s catalogs).

Likewise, if the mark identifies the prominent portion of a varietal name, it must be refused.In re Delta & Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) (affirming the refusal to register DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506).

1202.13 Scent, Fragrance, or Flavor

Scent. The scent of a product may be registrable if it is used in a nonfunctional manner.See In re Clarke, 17 USPQ2d 1238, 1239-40 (TTAB 1990) (holding that the scent of plumeria blossoms functioned as a mark for “sewing thread and embroidery yarn"). Scents that serve a utilitarian purpose, such as the scent of perfume or an air freshener, are functional and not registrable. SeeTMEP §§1202.02(a)-1202.02(a)(viii) regarding functionality. When a scent is not functional, it may be registered on the Principal Register under §2(f), or on the Supplemental Register if appropriate. The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.SeeIn re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1052 (TTAB 2013) (finding that peppermint scent mark for “pharmaceutical formulations of nitroglycerin” failed to function as a mark and noting the insufficiency of applicant’s evidence of acquired distinctiveness in light of evidence that the use of peppermint scent by others in the relevant marketplace (i.e., pharmaceuticals) tends to show that such scents are more likely to be perceived as attributes of ingestible products than as indicators of source));cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (requiring concrete evidence that the mark is perceived as a mark to establish distinctiveness).

Flavor. Just as with a scent or fragrance, a flavor can never be inherently distinctive because it is generally seen as a characteristic of the goods.In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1048 (finding that peppermint flavor mark for “pharmaceutical formulations of nitroglycerin” failed to function as a mark);In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (affirming refusal to register “an orange flavor” for “pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills,” on the grounds that the proposed mark was functional under §2(e)(5) and failed to function as a mark within the meaning of §§1, 2, and 45 of the Trademark Act). The Board has observed that it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function and consumers generally have no access to a product’s flavor or taste prior to purchase.Id. at 1650-51. Thus, an application to register a flavor “requires a substantial showing of acquired distinctiveness.”In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1051-52 (noting the insufficiency of applicant’s evidence of acquired distinctiveness in light of evidence that the use of peppermint flavor by others in the relevant marketplace tends to show that such flavors are more likely to be perceived as attributes of ingestible products than as indicators of source);In re N.V. Organon, 79 USPQ2d at 1650.

SeeTMEP §807.09 regarding the requirements for submitting applications for non-visual marks.

1202.14 Holograms

A hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as a trademark.See In re Upper Deck Co., 59 USPQ2d 1688, 1692-93 (TTAB 2001), where the Board held that a hologram used on trading cards in varying shapes, sizes, and positions did not function as a mark, because the record showed that other companies used holograms on trading cards and other products as anti-counterfeiting devices, and there was no evidence that the public would perceive applicant’s hologram as an indicator of source. The Board noted that “the common use of holograms for non-trademark purposes means that consumers would be less likely to perceive applicant’s uses of holograms as trademarks.” 59 USPQ2d at 1693.

Therefore, in the absence of evidence of consumer recognition as a mark, the examining attorney should refuse registration on the ground that the hologram does not function as a mark, under §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127.

Generally, if a hologram has two or more views, the examining attorney should also refuse registration under §§1 and 45 of the Trademark Act,15 U.S.C. §§1051  and1127, on the ground that the application seeks registration of more than one mark.In re Upper Deck, 59 USPQ2d at 1690-91.SeeTMEP §807.01.

1202.15 Sound Marks

A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound” with a good or service.In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978) . Thus, sounds may be registered on the Principal Register when they are “arbitrary, unique or distinctive and can be used in a manner so as to attach to the mind of the listener and be awakened on later hearing in a way that would indicate for the listener that a particular product or service was coming from a particular, even if anonymous, source.”In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) . Examples of sound marks include: (1) a series of tones or musical notes, with or without words; and (2) wording accompanied by music.

There is, however, a difference between unique, different, or distinctive sounds and those that resemble or imitate “commonplace” sounds or those to which listeners have been exposed under different circumstances, which must be shown to have acquired distinctiveness.Gen. Electric Broad. 199 USPQ at 563 (TTAB 1978). Examples of "commonplace" sound marks include goods that make the sound in their normal course of operation (e.g., alarm clocks, appliances that include audible alarms or signals, telephones, and personal security alarms). Therefore, sound marks for goods that make the sound in their normal course of operation can be registered only on a showing of acquired distinctiveness under §2(f).In re Powermat Inc., 105 USPQ2d 1789, 1793 (TTAB 2013) (finding battery chargers that emit “chirp” sounds slightly increasing and decreasing in pitch not inherently distinctive, and applicant’s advertising only relevant in a showing of acquired distinctiveness);Nextel Commc'ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009) (holding cellular telephones that emit a “chirp” sound fall into the category of goods that make the sound in their normal course of operation);Vertex, 89 USPQ2d at 1700, 1702 (holding personal security alarm clock products that emit a sound pulse fall into the category of goods that make sound in the normal course of operation).

SeeTMEP §807.09 regarding the requirements for submitting applications for sound marks and§904.03(f)regarding specimens for sound marks.

1202.16 Model or Grade Designations

Model designations appear in connection with a wide variety of products, such as retaining rings, hand tools, and pens, to identify a specific style, type, or design of a product within a particular line of goods.See In re Petersen Mfg. Co., 229 USPQ 466 (TTAB 1986) (noting that the following alphanumeric designations served as model numbers on the specimens, but finding the evidence of acquired distinctiveness under §2(f) sufficient for registration: 18R for a C clamp; 6LN for a locking plier with elongated jaw; 9LN for a locking plier with elongated jaw; 7CR for a locking plier with curved jaw; 6R for a C clamp; 20R for a chain clamp; 10CR for a locking plier with curved jaw; 7R for a locking plier with straight jaw; 10WR for a locking plier with wire cutter; 7WR for a locking plier with wire cutter; 5WR for a locking plier with wire cutter; RR for a locking specialty tool, namely, a pinch-off tool; 10R for a locking plier with straight jaw; 9R for a locking specialty tool, namely, a welding clamp; 8R for locking specialty tools, namely, metal clamping tools; and 11R for a C clamp); In re Waldes Kohinoor, Inc., 124 USPQ 471 (TTAB 1960) (holding that 5131, 5000, and 5100 for retaining rings functioned only to differentiate one type of the applicant’s retaining rings from its other types and did not function as a trademark to distinguish the applicant’s goods from those of others);Ex parte Esterbrook Pen Co., 109 USPQ 368 (Comm’r Pats. 1956) (holding that 2668 for pen points did not function as a mark because it was merely a style number for a particular pen point used to differentiate one pen point from other points in the product line).

Model designations also are commonly used to distinguish between different types of automobile parts within a single product line.See In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) (holding that the following alphanumeric designations used in connection with vehicle parts functioned only as part numbers and not as trademarks: 5-469X; 5-438X; 5-510X; 5-515X; 5-407X; 5-279X; and 5-281X). In addition, model designations may serve the purpose of providing users with product compatibility information between goods and parts, accessories, and/or fittings for the goods.See In re Otis Eng’g Corp., 218 USPQ 959, 960 (TTAB 1983) (noting that the fact that various pieces of applicant’s “X” equipment for oil wells are compatible with each other tends to support the position that “X” is a style or model designation, but finding that the specimens, advertising brochures, and affidavits when considered together demonstrate that “X” also functions as a trademark). They also facilitate ordering and tracking of goods.Id. (noting that the use of the same designation on various goods that work together would enable purchasers to order compatible equipment).

Grade designations are used to denote that a product has a certain level of quality within a defined range. They may also indicate that a product has a certain classification, size, weight, type, degree, or mode of manufacturing. Mere grade designations are often used by competitors within an industry, or by the general public, and do not indicate origin from a single source because their principal function is to provide information about the product to a consumer.See 1 Anne Gilson LaLonde,Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011). (Note: the use of a grade designation in the context of a certification mark is not discussed herein.)

For example, the fuel industry utilizes grade designations in the form of particular numbers to delineate different octane ratings of fuel.See In re Union Oil Co., 33 USPQ 43 (C.C.P.A. 1937) (affirming the decision of the Commissioner of Patents refusing to register 76 for gasoline because the term functioned merely as a grade or quality mark to indicate either the octane rating or the Baume gravity rating and did not indicate origin). Grade designations have also been used to signify the composition or strength of various types of steel.See Jones & Laughlin Steel Corp. v. Armco Steel Corp., 139 USPQ 132 (TTAB 1963) (holding that the terms 17-4PH and 17-7PH originally served only as a grade designation for stainless steel based on the composition of chromium and nickel, but finding the evidence of secondary meaning sufficient for registration). The United States Department of Agriculture (USDA) assigns grades in connection with butter to delineate between different quality levels based on flavor, aroma, and texture.SeeAgric. Mktg. Serv., U.S. Dep’t of Agric.,How to Buy Butter (Feb. 1995),http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3002487. The USDA also assigns grades to other food products, such as eggs, meat, and poultry.See Agric. Mktg. Serv., U.S. Dep’t of Agric.,Egg-Grading Manual (July 2000),http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3004502;Inspection & Grading of Meat and Poultry: What Are the Differences?, U.S. Dep’t of Agric. (Aug. 22, 2008),http://www.fsis.usda.gov/Fact_Sheets/Inspection_&_Grading/index.asp.

1202.16(a) Examination of Marks with Model and Grade Designations

A trademark comprises a word, name, symbol, device, or combination thereof that is used to identify the goods of an applicant, to distinguish them from the goods of others, and to indicate the source of the goods. Trademark Act §§1-2, 45, 15 U.S.C. §§1051-1052, 1127; seeTMEP §1202. Similar to a trademark, a model or grade designation is generally comprised of numbers or letters, or a combination thereof. However, the manner of use, and resulting commercial impression imparted by the matter, differentiate a mere model or grade designation from that of a trademark (or a dual-purpose mark that is both a model or grade designation and a trademark). While letters, numbers, or alphanumeric matter may serve as both a trademark and a model or grade designation, matter used merely as a model or grade designation serves only to differentiate between different products within a product line or delineate levels of quality, and does not indicate source.See Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 1576, 26 USPQ2d 1912, 1919 (Fed. Cir. 1993);Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1748 (TTAB 1989); 1 Anne Gilson LaLonde,Gilson on Trademarks§2.03(4)(a) (Matthew Bender 2011); J. Thomas McCarthy,McCarthy on Trademarks and Unfair Competition§11.36 (4th ed. 2011).

Even though a model or grade designation seems “arbitrary” in the sense that the combination of letters, numbers, or both does not immediately describe the goods, it often does not function as a trademark.See Gilson LaLonde,supra, §2.03(4)(a). Where the model or grade designation fails to distinguish the applicant’s goods from those of others or to identify the applicant as the source, the proposed mark must be refused registration on the Principal Register under §§1, 2, and 45 for failure to function as a trademark.15 U.S.C §§1051-10521127. However, if the mark both identifies a model or grade designation and serves as a trademark, no failure-to-function refusal should issue.See Ex parte Eastman Kodak Co., 55 USPQ 361, 362 (Comm’r Pats. 1942) (“The fundamental question is not whether or not the mark as used by applicant serves to indicate grade or quality but rather whether it is or is not so used that purchasers and the public will recognize the mark as indicating the source of origin of the goods.”).

In addition, the examining attorney must also consider whether the proposed mark is merely descriptive, or even generic. Trademark Act §2(e)(1),15 U.S.C. §1052(e)(1).  Grade designations often become synonymous with (and thus merely descriptive of) a classification, value, size, weight, type, degree, mode of manufacturing, or level of quality of the goods. And, more infrequently, model designations can be used in a merely descriptive manner.See Textron, Inc. v. Omark Indus., Inc., 208 USPQ 524, 527-28 (TTAB 1980) (holding that model numbers which have been used in the same manner by competitors for indicating the size of the saw chains as to pitch and gauge are merely descriptive and not registrable).

1202.16(b) Identifying Model and Grade Designations in Marks
1202.16(b)(i) Model Designations

Determining whether a proposed mark is used merely as a model designation is a question of fact.See In re Petersen Mfg. Co., 229 USPQ 466 (TTAB 1986) (finding that purchasers recognized the designations as trademarks in addition to functioning as model designations based on the ex parte record presented). The factual finding focuses on whether the proposed mark, as used on the specimen (and any other evidence of record), also identifies the applicant as the source of the goods or distinguishes the applicant’s goods from the goods of others. Extrinsic evidence may also aid in determining whether the proposed mark functions as a source indicator. The following three considerations comprise guidelines for determining whether a proposed mark, as used on a specimen, serves merely as a model designation or whether it also functions as a source indicator.

1202.16(b)(i)(A) Stylization of Display

The stylization of display refers to the visual presentation or “look” of a proposed mark on the specimen, and takes into consideration such elements as font style and color as well as design features. In some cases, the stylization creates an impression separate and apart from that of a model designation, thereby making the designation more likely to be perceived as a trademark. In analyzing stylization of display, the examining attorney should consider whether the font or stylization of lettering in the proposed mark is unusual or relatively ordinary, and should also consider the degree of stylization. Where the stylization is minimal, the proposed mark may be more likely to be perceived asmerely a model designation.

1202.16(b)(i)(B) Size of Proposed Mark

Size refers to the relative dimension of the proposed mark. If the proposed mark appears large in relation to any other matter, it may immediately catch the eye and make the proposed mark the focal point on the specimen. Therefore, the proposed mark would be less likely to be perceived as a mere model designation. If the proposed mark is smaller than the other matter surrounding it, however, consumers would be more likely to perceive it as merely a model designation.

1202.16(b)(i)(C) Physical Location

The physical location refers to the actual position of the proposed mark on a specimen. Although there is no prescribed location on a specimen where the proposed mark must be placed to qualify as a trademark, the physical location of matter on a specimen suggests how the mark would be perceived by consumers and whether such matter serves as a trademark or is merely a model designation. The display of a proposed mark in a prominent location on the goods themselves, or on the packaging or label, is a factor that may contribute to finding that it serves as a trademark. A proposed mark that appears in close proximity to generic or informational matter (such as the common or class name for the goods, net weight, bar code, or country of origin) is less likely to be perceived as a mark because it will be viewed together with the generic or informational matter as merely conveying information about the model of a particular product line.

1202.16(b)(ii) Grade Designations

A grade designation often indicates a standard that is common to producers or manufacturers within an industry. Determining whether a proposed mark is usedmerely as a grade designation is a question of fact.See In re Flintkote Co., 132 USPQ 295, 296 (TTAB 1961) (citingKiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 USPQ 105 (C.C.P.A. 1956)); J. Thomas McCarthy,McCarthy on Trademarks and Unfair Competition §11.36 (4th ed. 2011). Thus, the examining attorney must supplement consideration of the application content (i.e., the drawing, the description of the mark, the identification of goods or services, and the specimen, if any), with independent research of the applicant’s and competitors’ websites, the Internet, and databases such as LexisNexis® to determine how the designation is used in the industry. Such research will assist in determining whether the proposed mark is used by others to convey a specific characteristic of the goods (such as value, size, type, degree, or level of quality) and, as such, has a publicly recognized meaning. For example, if the evidence shows that A, B, C, and D, or 1, 2, 3, and 4, are commonly used in an industry to represent a hierarchy of quality, a mark consisting of such a letter or number likely would not indicate source in any one producer or manufacturer.See Shaw Stocking Co. v. Mack, 12 F. 707, 711 (C.C.N.D.N.Y. 1882) (“It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1, 2, 3, and 4, or the letters A, B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively. Why? Because the general signification and common use of these letters and figures are such, that no man is permitted to assign a personal and private meaning to that which has by long usage and universal acceptation acquired a public and generic meaning.”); 1 Anne Gilson LaLonde,Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011).

Where extrinsic evidence shows that matter in the proposed mark is used by competitors or members of the public to convey the same type of designation of quality, the resulting commercial impression is merely that of a grade designation with no source-identifying capability. The examining attorney should also analyze the specimen using the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) to bolster a refusal based on a failure to function as a mark. A lack of extrinsic evidence of usage of the proposed mark as a grade designation does not necessarily foreclose a refusal, where the nature of applicant’s use and the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) indicate a grade designation.

1202.16(c) Procedures for Handling Marks with Model and Grade Designations
1202.16(c)(i) Evidentiary Considerations when Issuing Model or Grade Designation Refusals
1202.16(c)(i)(A) Model Designations

To support a refusal to register a model designation for failure to function as a mark, the examining attorney must use the applicant’s specimen, along with any other relevant evidence in the application, such as the identification of goods and mark description. If available, the examining attorney should also provide additional evidence that shows that the proposed mark would be perceived merely as a model designation, such as consumers referring to the applicant’s proposed mark as a model or part number when ordering the goods. Evidence that other manufacturers use similar numbering systems to identify model numbers for their goods may be submitted to show that consumers are familiar with the use of alphanumeric designations as model numbers and are consequently less likely to perceive the applicant’s use of the mark as source indicating.

1202.16(c)(i)(B) Grade Designations

A refusal or requirement (such as a disclaimer requirement) on the basis that a mark comprises or includes a grade designation must be supported by relevant evidence. Where extrinsic evidence is available to show that a proposed grade designation is used by competitors within an industry and/or members of the public to convey the same meaning, the examining attorney must attach the evidence to the Office action and explain its relevance to the refusal. For example, evidence demonstrating that other manufacturers use the same or similar grading systems to identify quality levels of their own goods may be submitted with an explanation that such evidence shows that the proposed mark does not indicate origin from a single source. If no extrinsic evidence is available, the examining attorney must use the applicant’s specimen, along with any other relevant evidence of record, to support a grade designation refusal for failure to function as a mark. In such situations, the examining attorney must also issue a request for relevant information (such as fact sheets, instruction manuals, and/or advertisements depicting the applicant’s use of the proposed mark, and evidence of any industry use of this designation or similar designations) pursuant to37 C.F.R. §2.61(b).

1202.16(c)(ii) Entire Mark Consists of Model or Grade Designation in §1(a) Applications

If the evidence shows that a proposed mark consists entirely of a mere model or grade designation, the examining attorney must refuse registration on the Principal Register under §§1, 2, and 45 because the proposed mark does not function as a trademark to identify and distinguish the applicant’s goods from those of others and indicate the source of the goods. 15 U.S.C §§1051-1052,1127.

For such refusals, where appropriate, the examining attorney should advise the applicant of the various response options: (1) submitting a substitute specimen that shows the proposed mark being used as a trademark for the identified goods; (2) claiming acquired distinctiveness under §2(f) with actual evidence of distinctiveness that establishes recognition of the proposed mark as a trademark for the goods; or (3) amending the application to seek registration on the Supplemental Register.SeeTrademark Act §23,15 U.S.C.  §1091;In re Petersen Mfg. Co., 229 USPQ 466, 468 (TTAB 1986) (finding letter-number combinations registrable under §2(f) for locking hand tools and stating, “there is no question that such model designations can, through use and promotion, be perceived as marks indicating origin in addition to functioning as model designations.”);37 C.F.R. §2.59(a);TMEP §904.05.

For marks comprising grade designations, the examining attorney must determine whether to make an additional refusal on the grounds that the mark is also merely descriptive of the goods. Trademark Act §2(e)(1),15 U.S.C. §§1052(e)(1).  Grade designations can often become synonymous with (and thus merely descriptive of) a classification, value, size, weight, type, degree, mode of manufacturing, or level of quality of the goods. Grade designations that are also the generic name of the goods are not eligible for registration on the Principal Register under §2(f) or on the Supplemental Register because they are not capable of indicating the source of the goods and must remain available to identify the relevant characteristic possessed by goods meeting such criteria. In such cases, if the applicant responds by amending the application to seek registration on the Supplemental Register, the examining attorney must issue a generic refusal under §23. In the rare situation where the applicant is the sole user of a grade designation and where the mark appears capable, the applicant should be provided with the same response options identified above for applicable model designations.

1202.16(c)(iii) Composite Mark with Model or Grade Designation in §1(a) Applications

Composite marks may comprise matter that is used as a model or grade designation in addition to other wording and/or design features. Such marks must be evaluated as a whole to determine whether they are registrable.

1202.16(c)(iii)(A) Model or Grade Designations with Arbitrary and/or Suggestive Matter

Terms used as model or grade designations that are combined with arbitrary and/or suggestive matter are generally not refused registration under Trademark Act §§1, 2, and 45, if the additional matter imparts trademark significance to the mark as a whole. Generally, no disclaimer of a portion that is a model designation need be required (unless there is evidence of descriptive or generic usage) because the composite mark creates a single unitary commercial impression and there is no need to preserve the availability of the applicant’s model designation for others. However, the portion of a mark that is a grade designation must generally be disclaimed in cases where there is evidence of descriptive or generic use, to clarify the availability of the grade designation for use by others in the industry. Standard USPTO disclaimer practices would apply in such cases, including considerations of unitariness. SeeTMEP §§1213-1213.08(d).

1202.16(c)(iii)(B) Model or Grade Designations with Descriptive, Generic, and/or Informational Matter

Terms used merely as model or grade designations that are combined with descriptive, generic, and/or informational matter are generally refused registration under Trademark Act §§1, 2, and 45 because this type of additional matter does not diminish the mark’s model or grade designation significance. In most instances involving model designations, claims of acquired distinctiveness under §2(f) and amendments to the Supplemental Register may be permissible. Additionally, in rare cases where there is no evidence of generic usage for grade designations, claims of acquired distinctiveness under §2(f) and amendments to the Supplemental Register may be permissible. In such cases, the examiner must consider standard USPTO disclaimer practice to determine whether a disclaimer of the generic and/or informational matter may be necessary.SeeTMEP §§1213-1213.08(d).

1202.16(c)(iv) Drawing and Specimen Agreement Issues in §1(a) Applications

Occasionally, the specimen will show a possible model or grade designation that is not included on the drawing and thus, the mark on the drawing and specimen will appear to disagree.SeeTMEP §807.12(d). When it is unclear whether the additional matter is a model or grade designation, the examining attorney must refuse registration under §§1 and 45 on the ground that the specimen does not show the applied-for mark in use in commerce.15 U.S.C. §§10511127;37 C.F.R §§2.34(a)(1)(iv),2.56(a);TMEP §§904,904.07(a),1301.04(g)(i). If the matter is not part of the mark and is merely used as a model or grade designation, the applicant may respond to the refusal by submitting the following: (1) a statement that the matter is merely a model or grade designation and (2) evidence showing use of the proposed mark with other similar notations or evidence clearly showing that the matter is merely a model or grade designation.See37 C.F.R. §2.61(b);In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (holding the mark TINEL-LOCK on the drawing to agree with the wording TR06AI-TINEL-LOCK-RING appearing on the specimen where the notation TR06AI was merely a part or stock number, as supported by a submitted brochure that explained that each letter and number in the notation represented a specific type, size, and feature of the part, and the term RING was generic for the goods);In re Sansui Elec. Co.,194 USPQ 202, 203 (TTAB 1977) (holding the marks “QSE” and “QSD” on the drawing to agree with the wording “QSE-4” and “QSD-4” appearing on the specimens, where the notation “4” was merely a model number and the additional specimens showed use of the mark with various changing model numbers used to designate successive generations of equipment). In the alternative, the applicant may provide a substitute specimen showing the proposed mark depicted on the drawing.See37 C.F.R. §2.59(a);TMEP §904.05. In cases where the record clearly indicates that the notation on the specimen is a model or grade designation, no specimen refusal should issue.SeeIn re Raychem Corp., 12 USPQ2d at 1400.

1202.16(c)(v) Model or Grade Designation in §1(b), §44, or §66(a) Applications
1202.16(c)(v)(A) Model Designations

In §1(b), 44, or 66(a) applications, marks that appear to be merely model designations (either wholly comprising the mark or used with descriptive/generic/informational matter) may be refused registration for failure to function as a mark only where the drawing and mark description are dispositive of the mark’s failure to function, or the record clearly and unequivocally indicates that the entire mark identifies only a model designation.Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (affirming an ornamentation refusal in a §66(a) application despite the lack of a specimen since the mark was decorative or ornamental on its face as depicted on the drawing page and described in the application). For those rare cases where a refusal issues in a §66(a) application, the examining attorney must not offer an amendment to the Supplemental Register. Applications filed under §66(a) are not eligible for registration on the Supplemental Register.37 C.F.R. §§2.47(c),2.75(c);TMEP §816.01; see also15 U.S.C. §1141h(a)(4).  Otherwise, because of the lack of specimen of use, a failure-to-function refusal is inappropriate.

If upon initial examination of a §1(b) application, an examining attorney must issue an Office action for other reasons, and the proposed mark appears to be used or intended to be used merely as a model designation, the examining attorney should include a model designation failure-to-function advisory as a courtesy to the applicant.SeeTMEP §1102.01. Regardless of whether an examining attorney issues an initial advisory before the applicant files an allegation of use, the examining attorney must issue a refusal based on failure to function as a mark after the allegation of use is filed, if supported by the evidence of record.Id.

1202.16(c)(v)(B) Grade Designations

The examining attorney must refuse registration based on a failure to function as a mark for a mark merely comprising a grade designation (or a grade designation with descriptive/generic/informational matter) in a §1(b), 44, or 66(a) application where the evidence shows the mark is used in the industry or by the public in such a way as to clearly and unequivocally show use merely to identify a specific quality or feature of the goods. For more information about evidence, seeTMEP §1202.16(c)(i)(B). If the examining attorney can find no extrinsic evidence of such use, the procedures outlined for model designations inTMEP §1202.16(c)(v)(A) must be followed.

1202.17 Universal Symbols in Marks

The term “universal symbol” refers to a design, icon, or image that is commonly used in an informational manner and conveys a widely recognized or readily understood meaning when displayed in its relevant context.See Webster’s New World College Dictionary 1356 (3rd ed. 1997) (defining “symbol” as “something that stands for, represents, or suggests another thing; esp., an object used to represent something abstract);id. at 1460 (defining “universal” as “used, intended to be used, or understood by all”). Universal symbols are typically available for use by anyone to quickly provide notice of a particular condition or to indicate a characteristic of an object or area. Thus, they appear in a variety of places, such as on road signs, near dangerous machinery, on medical apparatus, in hazardous locations, on product warning labels, or on materials connected with recycling activities. Usually, the context in which a universal symbol appears is crucial in determining the symbol’s significance.

Matter that is specifically protected by statute or registered as a mark should not be considered to be a universal symbol.SeeTMEP §1205. For example, certain symbols that have a widely recognized meaning, such as the Red Cross, are subject to specific statutory protections restricting their use and may be refused under various provisions of the Trademark Act.SeeTMEP §1205.01.

The following are examples of common universal symbols:

Description: image of Recycling symbol

The recycling symbol typically designates materials that are recyclable or recycled, but may also indicate that goods or services involve recycling or are otherwise environmentally friendly.See, e.g., About.com,Recycling Symbols Made Easy,http://greenliving.about.com/od/recyclingwaste/tp/recycling_symbols.htm(accessed Aug. 24, 2012).

Description: International radiation symbol

The international radiation symbol indicates proximity to a source of radiation or radioactive materials.See, e.g., U.S. Dept. of Health & Human Servs.,Examples of Radiation Signs and Symbols for Work Areas, Buildings, Transportation of Cargo,http://www.remm.nlm.gov/radsign.htm (accessed Aug. 24, 2012).

Description: Biohazard symbol

The biohazard symbol indicates the presence of pathogens or other matter that is potentially harmful or poses a health risk.See, e.g., U.S. Department of Energy, Berkeley Lab, Biohazardous Waste Labels,http://www2.lbl.gov/ehs/waste/pub-3095/wm_pub_3095_ch2.shtml(accessed Aug. 14, 2017).

Description: universal prohibition symbol

The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of “no,” “not,” or “prohibited.”See, e.g., Free Signage.com,Prohibition Signs,http://www.freesignage.com/prohibited_signs.php (accessed Aug. 24, 2012).

1202.17(a) Relevance of Universal Symbols to Examination

Universal symbols may appear as one element of a mark, or they may form an entire mark. The informational aspect of these symbols is often at odds with the functions of trademarks and service marks: to identify and distinguish one’s goods or services and indicate their source. Specifically, a universal symbol may fail to function as a mark because it only imparts information, conveys an informational message, or provides ornamentation.See15 U.S.C. §§10511052,1053,1127;TMEP §§1202,1202.03, 1202.04. In addition, a universal symbol may merely describe a feature, quality, function, purpose, or characteristic of goods or services.See15 U.S.C. §1052(e)(1)TMEP §§1209,1209.01(b). If a universal symbol in a mark creates a false impression about a characteristic or quality of an applicant’s goods or services, the mark may be deceptive or deceptively misdescriptive.See15 U.S.C. §§1052(a)1052(e)(1);TMEP §§1203.02–1203.02(g),1209.04. As explained inTMEP §1202.17(b), however, registration of a universal symbol may be permissible in some instances.

1202.17(b) Reviewing Marks Containing Symbols

For each application, the examining attorney must determine whether the mark contains a universal symbol. Some universal symbols, such as the recycling symbol, are immediately identifiable. Others may not be, and applications for marks containing a symbol do not always identify the symbol, explain its significance, or indicate whether it is shown in a stylized or unusual form.

1202.17(b)(i) Identifying Universal Symbols in Marks

If a mark includes or consists of a symbol (or an unfamiliar symbol-like element), the examining attorney should review the application for any information the applicant may have provided about the symbol and ensure that an accurate description is included in the record.SeeTMEP §§ 808.03,808.03(b),808.03(d). The examining attorney may also use the mark’s assigned design codes to determine the name of the symbol and to search the Trademark database for applications and registrations that describe the symbol.SeeTMEP §104. If the design codes assigned to the mark do not accurately reflect the significant elements of the mark, the examining attorney should ensure that the design codes are updated so that the correct codes are listed.SeeTMEP §808.03(f). After identifying the symbol, the examining attorney may find additional information about it by using Internet search engines or symbol reference websites.

Even without the name of the symbol, the examining attorney may be able to find information about it by entering a textual description of it in an Internet search engine. For instance, one could find information about the recycling symbol, even without knowing the name of the symbol, by using the following textual description in a search engine query: “green curved arrows triangle.” Additionally, the examining attorney could consult a symbol reference website that provides a means of searching based on a symbol’s graphical characteristics.See Symbols.com,Graphic Index,http://www.symbols.com/graphic-index/ (accessed Aug. 24, 2012).

In addition, the Trademark Law Library holds a number of reference books about symbols and their meaning, and its librarians are available to assist USPTO personnel in researching questions regarding the identity, significance, and use of symbols. Furthermore, under Trademark Rule 2.61(b), the examining attorney may require the applicant to provide additional information about an unfamiliar symbol in a mark.37 C.F.R. §2.61(b).

The examining attorney’s research may show that a symbol (or symbol-like element) in a mark is not a universal symbol. However, other symbols, symbol-like elements, and designs that are not universal symbols may nonetheless be perceived only as informational matter and thus fail to function as marks. In these instances, the examining attorney need not take any further action with respect to the universal symbol analysis, but should ensure that the application record contains a mark description that accurately describes the significant elements of the mark.TMEP §§808.01,808.02,808.03(b). The examining attorney should otherwise review the application according to standard USPTO practice and determine whether it complies with all applicable trademark statutes and rules.

1202.17(b)(ii) Marks Displaying an Unusual Depiction of a Universal Symbol

If the mark contains a universal symbol, the examining attorney must determine whether the mark displays the symbol in the usual manner or otherwise features an accurate depiction of the symbol. This may be done by comparing the symbol in the mark with any accurate depictions of the symbol the examining attorney finds while researching the symbol.

Generally, a universal symbol in a mark should be considered registrable matter if it is highly stylized, if it incorporates elements that are not usually in the symbol, or if it is integrated with other matter in the mark, and, as a result, a distinctive commercial impression separate and apart from the symbol’s usual significance is created or a source-indicating unitary whole is formed.Cf. In re LRC Prods. Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (noting that “where designs or representations were more realistic and where the design left no doubt about the depiction of a central feature or characteristic of the goods or services,” the Board has found that such designs and representations are merely descriptive);TMEP §1213.03(c) (“No disclaimer of highly stylized pictorial representations of descriptive matter should be required[,] because the design element creates a distinct commercial impression.”);TMEP §1213.05(f) (“The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary.”);TMEP §1213.05(g)(iv) (“If literal and design elements in a mark are so merged together that they cannot be divided or regarded as separable elements, these elements may be considered unitary.”). However, displaying an accurately depicted universal symbol as a replacement for a letter in a mark’s literal element normally will not change the symbol’s usual impression (or create a unitary whole), nor will minor alterations to the symbol, such as slight stylizations or nondistinctive changes to color scheme or proportions.Cf.TMEP §§1213.03(c),1213.05(g).

1202.17(b)(iii) Marks Displaying an Accurate Depiction of a Universal Symbol

If the mark displays the universal symbol in the usual manner, or otherwise features an accurate depiction of the symbol, the examining attorney must determine whether, in view of the identified goods or services, it is necessary to issue a refusal or disclaimer requirement based on failure to function, mere descriptiveness, deceptive misdescriptiveness, or deceptiveness grounds.SeeTMEP §§1202.17(c)(i),1202.17(d)(i)-(d)(ii).

1202.17(c) Failure to Function

The USPTO will not register a mark unless it functions as a mark.See15 U.S.C. §§10511052,1053,1127;In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976) (“Before there can be registration, there must be a trademark . . . .”);In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) (“Registration presupposes the existence of a trademark to be registered.”);TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others. See15 U.S.C.  §1127;TMEP §1202. Not every designation that a party places on goods or packaging, or uses in connection with services, necessarily performs these source-indicating functions, regardless of the party’s intentions when adopting the designation.In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) (“As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself.”). Some designations can never serve as a source indicator.See In re Eagle Crest, Inc., 96 USPQ2d at 1229;Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973) .

1202.17(c)(i) Determining Whether a Universal Symbol Functions as a Source Indicator

The determination as to whether a universal symbol in a mark functions as a source indicator involves considering the significance of the symbol, the nature of the symbol’s use in the relevant marketplace, and the impression created when the mark is used in connection with the identified goods or services.See In re Eagle Crest, Inc., 96 USPQ 1227, 1229 (TTAB 2010) (noting that, to determine how a designation would be perceived by the relevant public, the Board “look[s] to the specimens and other evidence of record showing how the designation is actually used in the marketplace”);In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (“A critical element in determining whether matter sought to be registered is a trademark is the impression the matter makes on the relevant public. Thus . . . the critical inquiry is whether the asserted mark would be perceived as a source indicator. . . .”);In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998) (“In order to assess the commercial impact created by the designation . . . we look to the specimens and other materials which show how the mark is actually used in the marketplace.”).

Relevant evidence of a symbol’s significance and usual manner of use includes the resources referenced inTMEP §1202.17(b)(i), any other competent materials indicating the meaning of the symbol, and Internet excerpts or trade matter showing the symbol being used in a particular field or context, or in connection with the relevant goods or services.

Weighing these considerations in view of the available facts and evidence may lead the examining attorney to the conclusion that the mark does not serve as a source indicator, but instead fails to function because it (1) imparts information about the goods or services, (2) conveys an informational message (though not necessarily about the goods or services themselves), or (3) serves only as ornamentation on the goods or services.SeeTMEP §§1202.17(c)(i)(A)-(c)(i)(B).

1202.17(c)(i)(A) Informational Universal Symbols

Universal Symbols that Impart Information About the Goods or Services

Merely informational matter is not registrable as a trademark or service mark.SeeTMEP §1202.04. When a universal symbol in a mark is used in its usual context or field, or with relevant goods or services, it will likely impart its generally recognized meaning and thus perform only an informational function, rather than serve to identify any single source of the goods or services.Cf.In re Schwauss, 217 USPQ 361 (TTAB 1983) (holding mark consisting of FRAGILE in a “jarred or broken” stylization failed to function as a trademark for labels and bumper stickers). For instance, because the biohazard symbol commonly appears on items to indicate the presence of hazardous materials, the symbol is unlikely to function as a trademark on goods such as containers for disposing of medical waste.See, e.g.,Graphic Products, Biohazard Signs,http://www.graphicproducts.com/sign-printers/biohazard-signs.html(accessed Aug. 24, 2012).

In these circumstances, the symbol’s position, prominence, and surrounding context on the specimen of use will not be as significant in the analysis, because the symbol will function only as informational matter regardless of its manner of use on the specimen.Cf.In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1460-61 (affirming refusal to register DRIVE SAFELY because “to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . .”);In re Schwauss, 217 USPQ at 362 (“[T]o allow registration [of stylized word FRAGILE for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object.”). Nonetheless, the examining attorney should analyze how the mark (and the symbol in it) is used on the specimen because it may lend further support to the failure-to-function refusal.

Sometimes a symbol is applied to goods or services outside the symbol’s normal context and the symbol could therefore serve a source-indicating function. Thus, the biohazard symbol could function as a service mark for live musical-performance services, for example, because the symbol would not provide any relevant information about the services, even when encountered by someone who knows what the symbol usually means.

Universal Symbols that Convey an Informational Message

Even if a mark does not directly impart information about goods or services, it may nonetheless fail to function if it conveys an informational message to others.See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1230-31 (TTAB 2010) . For example, common phrases and slogans that are frequently displayed by many different parties on various goods are not likely to be viewed as source indicators, even if the matter is being used in a non-ornamental manner.See id. Instead, such goods would likely be purchased for the message the phrase or slogan conveys.See id. at 1230. SeeTMEP §1202.04 regarding informational matter.

Likewise, when certain commonly used universal symbols appear on goods such as clothing, fashion accessories, and household items, they would likely be perceived as conveying an informational message and the goods featuring these symbols would likely be purchased for that reason. For example, evidence may show that when the recycling symbol appears on the upper-left chest area of a t-shirt, those encountering the shirt are likely to assume that it indicates support for recycling or environmental causes in general. Or evidence may support the conclusion that a peace symbol used on t-shirts or stickers likely will not function as mark, because even if it is not ornamental and does not necessarily provide any particular information about the goods themselves, it is informational in the sense that it conveys a message of supporting peace.

The examining attorney may support a failure-to-function refusal in these cases by providing evidence that indicates the widely recognized meaning of the symbol, establishes that the symbol is commonly used to convey particular information, and shows that the symbol commonly appears on the goods at issue or analogous goods. See id. Factors such as the symbol’s position and prominence on the goods, as shown by the specimen of use, may also support the determination that the matter will be perceived only as conveying a message.See id. at 1230-31. As with any other substantive refusal, the amount, type, and nature of the evidence required to support a failure-to-function refusal will vary depending on the facts of the particular application.

Although this issue is more likely to arise when universal symbols are displayed on goods, it is also possible for a universal symbol to convey an informational message when used in connection with services.

1202.17(c)(i)(B) Ornamental Universal Symbols

Matter that serves only as an ornamental feature of goods does not identify and distinguish the goods and, thus, does not function as a trademark.TMEP §1202.03. Like any other design element, universal symbols may be used ornamentally on goods such as clothing, jewelry, fashion accessories, and household items. In these instances, the symbol’s position, prominence, and surrounding context on the specimen are particularly significant in determining whether the matter serves as ornamentation. For more information on the relevant considerations, seeTMEP §§1202.03–1202.03(d).

The examining attorney should not suggest the usual response options for an ornamental refusal (i.e., showing secondary source, claiming acquired distinctiveness, or amending to the Supplemental Register) unless the mark is capable of serving as a trademark and does not also fail to function because it imparts information or conveys an informational message.SeeTMEP §1202.03.

1202.17(c)(ii) Mark Consists Entirely of a Universal Symbol that Fails to Function

If a mark consists entirely of a universal symbol and the examining attorney determines that the universal symbol fails to function as a source indicator for the identified goods, the examining attorney must issue a refusal under Trademark Act Sections 1, 2, and 45.15 U.S.C. §§10511052,1127;see In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1863 (TTAB 2006) (“It is well established that the refusal of failure to function is properly based on Sections 1, 2 and 45 of the Act.”). For service marks, the refusal is based on Trademark Act Sections 1, 2, 3, and 45.15 U.S.C. §§10511052,1053,1127. For applications seeking registration on the Supplemental Register, the statutory basis for the failure-to-function refusal is Trademark Act Sections 23 and 45.15 U.S.C. §§10911127;seeTMEP §1202.

When issuing a failure-to-function refusal, the examining attorney must explain the particular reasons the mark does not function as a trademark or service mark and provide sufficient evidence in support of the explanation.See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (finding that the examining attorney had “shown prima facie that the slogan [ONCE A MARINE, ALWAYS A MARINE] would be perceived solely as informational matter rather than as a trademark and applicant [had] submitted no evidence to rebut that showing”); TMEP §§1202,1301.02(a). See TMEP §§1202.17(b)(i) and1202.17(c)(i) for further discussion of evidence.

1202.17(c)(ii)(A) Applications Based on Sections 1(b), 44, or 66(a)

Generally, the failure-to-function refusal is a specimen-based refusal.TMEP §1202. However, the examining attorney may issue a failure-to-function refusal for applications based on §1(b), §44, or §66(a) if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark.SeeTMEP §1202;cf. In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, “it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark”).

If the examining attorney is otherwise issuing an Office action and anticipates refusing a mark in a §1(b) application on failure-to-function grounds once the applicant submits a specimen with an allegation of use, the examining attorney should advise the applicant of the potential refusal. If possible, this should be done in the initial Office action. However, failure to provide an advisory does not preclude an examining attorney from later refusing registration. SeeTMEP §1202.

1202.17(c)(ii)(B) Applicant’s Response to Refusal

If a mark fails to function because it consists of a universal symbol that is informational or that conveys an informational message, the examining attorney should not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register. The relevant issue is not whether the mark is distinctive, but, instead, whether the matter in question even functions as a mark.See In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (agreeing with the examining attorney that “evidence of distinctiveness under Section 2(f) of the Act is irrelevant to the issue of whether the subject phrase [at issue] functions as a technical service mark”). Therefore, neither a claim of acquired distinctiveness under Trademark Act Section 2(f) nor an amendment to the Supplemental Register is a proper response to the refusal.See In re Wakefern Food Corp., 222 USPQ at 79. Furthermore, allowing registration in these instances, either on the Principal Register under Section 2(f) or on the Supplemental Register, would inhibit others from using merely informational matter that should be freely available to use.See TMEP §1202.04;cf. In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1460-61 (Affirming refusal to register DRIVE SAFELY because “to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . .”);In re Schwauss, 217 USPQ at 362 (“[T]o allow registration [of stylized word FRAGILE for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object.”).

In addition, the examining attorney should not suggest that the applicant submit a substitute specimen or amend to an intent-to-use filing basis in these cases. If the mark is informational or conveys an informational message, the applicant likely will be unable to provide a specimen showing proper trademark or service mark use. The applicant may amend the application to an intent-to-use basis, but it likely will only temporarily overcome the refusal, given that a specimen showing proper trademark or service mark use is required before a registration may issue.SeeTMEP §1103. The examining attorney must review any substitute specimen submitted to confirm that refusal remains warranted.

Finally, if a mark consisting of a universal symbol fails to function only because it is used in an ornamental manner on the specimen, and it is possible that the mark could function if used in a trademark manner, then all of the response options discussed immediately above should be suggested by the examining attorney, if otherwise appropriate.

1202.17(c)(iii) Mark Includes a Universal Symbol that Fails to Function

If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears along with other non-source-indicating matter, the examining attorney must issue a failure-to-function refusal.SeeTMEP §1202.17(c)(ii).

If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears in a non-unitary manner with other registrable matter that is arbitrary, fanciful, suggestive, or otherwise source-indicating, the examining attorney must require a disclaimer of the universal symbol.SeeTrademark Act Section 6(a),15 U.S.C. §1056(a);  TMEP §§1213,1213.01(b),1213.02,1213.03(a). The examining attorney should not suggest that the applicant claim acquired distinctiveness in part as to the symbol. SeeTMEP §1202.17(c)(ii)(B).

An applicant may also delete a purely informational universal symbol that appears along with other registrable matter, provided the symbol is separable from the other matter and the deletion does not materially alter the commercial impression of the mark.SeeTMEP §807.14(a).

1202.17(d) Other Relevant Refusals

The examining attorney should also consider the following potential grounds for refusal when reviewing a mark featuring a universal symbol. In addition to those discussed below, the examining attorney should determine whether there is a sufficient basis for any other relevant refusals (e.g., a §2(d) refusal).

1202.17(d)(i) Merely Descriptive

Often, when the examining attorney has determined that a universal symbol fails to function because it only provides information about the goods or services, the available evidence will also support a refusal (or a disclaimer requirement) under Trademark Act §2(e)(1),15 U.S.C. §1052(e)(1),  based on mere descriptiveness.

If a mark consists of a merely descriptive universal symbol and other descriptive, generic, or otherwise non-source-indicating matter, then the mark is merely descriptive in its entirety and the examining attorney must issue a refusal under §2(e)(1). If a mark consists of a merely descriptive universal symbol, along with other arbitrary, fanciful, or suggestive matter, the examining attorney must require a disclaimer of the universal symbol unless the composite mark creates a unitary commercial impression. See Trademark Act §6(a),15 U.S.C. §1056(a);  TMEP §§1213,1213.01(b),1213.02,1213.03(a).

When both a §2(e)(1) and a failure-to-function refusal are issued, the examining attorney should not suggest that the applicant claim acquired distinctiveness or amend to the Supplemental Register. For more information, seeTMEP §1202.17(c)(ii)(B).

1202.17(d)(ii) Deceptive or Deceptively Misdescriptive

The inclusion of a universal symbol in a mark may lead consumers to believe the goods or services have a particular characteristic or quality. For instance, evidence may show that a mark featuring the recycling symbol would lead to a perception that the goods to which the mark is applied are recyclable or are made of recycled materials.

If the relevant goods or services do not have the relevant characteristic or quality, then the mark may be deceptive under Trademark Act Section 2(a) or deceptively misdescriptive under Section 2(e)(1). In those instances, the examining attorney should follow the same procedures as would apply to any deceptive or deceptively misdescriptive mark. For more information, see TMEP §§1203.02–1203.02(g) and1209.04.

1202.17(e) Universal Symbols Commonly Appearing in Marks

The universal symbols discussed below frequently appear in applied-for marks. Some of these symbols are so widely used and well known that they will have only non-trademark significance when used with almost any good or service in any context or field. Others will fail to function as source indicators only when used with particular goods or services. Nonetheless, all of these symbols could function as source indicators if they are displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole.SeeTMEP §1202.17(b)(ii). Like any design element, all of these symbols may be used in an ornamental manner on goods and, if so, should be refused accordingly. Finally, depending on the particular facts and available evidence, other grounds for refusal may apply to marks containing these symbols (e.g., Section 2(e)(1), Section 2(d), Section 2(a)).

1202.17(e)(i) Awareness Ribbon Symbols
Description: Gray scale awareness ribbon.

The awareness ribbon symbol is a representation of a ribbon intended to signify and promote awareness of a particular cause. The specific cause represented depends on the color or color scheme displayed.See, e.g., Support Store,Cause Awareness By Color,http://www.bumperstickermagnet.com/cause-awareness-by-color.html(accessed Aug. 24, 2012). For example, the pink awareness ribbon is commonly associated with awareness of breast cancer and related causes.See id. Yellow ribbons are frequently used to indicate support of the armed forces.See id. And red ribbons are typically associated with awareness of HIV/AIDS or heart disease.See id.

Due to the widespread use of the awareness ribbon in various colors to indicate support for, or raise awareness of, a cause, the awareness ribbon shape by itself will not function as a source indicator. However, the examining attorney must evaluate an awareness ribbon symbol in a mark as a whole, including the color, color scheme, pattern, or other matter inside of the ribbon, to determine whether it functions as a source indicator.

Some awareness ribbons have become so widely used and well known that they are unlikely to function as a mark when used in connection with almost any goods or services. These include ribbons in pink, yellow, red, and possibly others. The pink awareness ribbon, for example, has become the universal symbol of breast cancer awareness. This symbol appears in connection with the charity activities of numerous organizations and is used on a wide variety of products, including clothing, jewelry, sports equipment, and household items. Often, when it is used, it has informational or ornamental characteristics, or both. Thus, it is more likely that consumers, upon encountering the pink ribbon symbol on a product, would view it as informational or decorative regardless of the particular context or use. For instance, evidence may support the conclusion that, when a pink ribbon is displayed on the packaging for a household appliance, the ribbon would likely be viewed as indicating that the product has some connection to a breast cancer-related cause (e.g., some portion of the proceeds from the sale of the appliance would go towards breast cancer research). Or evidence may establish that the pink ribbon symbol displayed on a shirt would be viewed as conveying the message that the wearer is a supporter of breast cancer survivors or breast cancer causes in general. Even when an awareness ribbon symbol features a particular color, color scheme, or pattern that is not commonly used or widely recognized, the examining attorney should evaluate whether the symbol is inherently distinctive.

The actions an examining attorney will take when examining a mark featuring an awareness ribbon symbol depend on which of the following categories the awareness ribbon symbol falls under:

Category 1: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive and the evidence shows that the symbol’s use by various parties in that color, color scheme, or pattern is so widespread, and its meaning so widely understood, that it will likely be perceived as only providing information or conveying an informational message when used in connection with the goods or services.

This type of awareness ribbon symbol fails to function as a mark and the examining attorney must refuse registration if the symbol forms the entire mark or appears with only other non-source-indicating matter, or disclaim the symbol if it appears with registrable matter.

Awareness ribbon symbols in this category are incapable of functioning as a mark. Thus, if the mark consists entirely of this type of symbol, claiming acquired distinctiveness under §2(f) or amending the application to seek registration on the Supplemental Register will not overcome the refusal. Likewise, a claim of acquired distinctiveness in part will not obviate a disclaimer requirement.

Awareness ribbon symbols that do not contain inherently distinctive matter inside the ribbon, and are displayed in black and white, or gray scale, because they appear in non-color mark drawings, are incapable of functioning as a mark and would be subject to the same procedures set forth above.

Examples:

Description: image of Pink Awareness Ribbon

Pink ribbon

Description: image of Yellow awareness ribbon.

Yellow Ribbon

Description: image of Gray scale awareness ribbon.

Black-and-White or Gray Scale Ribbon

Category 2: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive, but there is no evidence that the awareness ribbon symbol shown in the mark is widely used by various parties or that its meaning is widely understood.

In these cases, the symbol is not inherently distinctive and fails to function as a mark because, given the widespread use of awareness ribbons in various colors and patterns generally, the symbol will not be perceived as a source indicator. Thus, the examining attorney must refuse registration if the symbol forms the entire mark (or appears with other non-source-indicating matter), or require a disclaimer of the symbol if the symbol appears with registrable matter. However, the applicant may overcome the refusal by showing acquired distinctiveness based onactual evidence establishing recognition of the proposed mark as a source indicator, or by amending the application to seek registration on the Supplemental Register. For awareness ribbon symbols in this category, evidence of five years’ use usually will not be sufficient to show that the mark has acquired distinctiveness. SeeTMEP §§1212.06–1212.06(e)(iv) for information on establishing acquired distinctiveness by actual evidence. A disclaimer requirement may be obviated by claiming acquired distinctiveness in part as to the symbol based on actual evidence.

Examples:

Description: image of an awareness ribbon that is half teal, half purple, and outlined in blue.

for "promoting public awareness of domestic violence, sexual assault and child abuse"

Description: image of an awareness ribbon shape featuring the outline of West Virginia

for "surgery; and medical services, namely, treatment of breast disease"

Category 3: The matter inside the awareness ribbon shape in the mark is inherently distinctive or otherwise registrable (e.g., non-descriptive/non-informational wording, registrable design elements) and there is no evidence that the awareness ribbon shown in the mark is widely used by various parties or that its meaning is widely understood.

No refusal (or disclaimer) is necessary, as long as the awareness ribbon is not used ornamentally on the specimen, because the ribbon shape and the matter within it create a registrable unitary whole.

Examples:

Description: image of an awareness ribbon with stylized tire tracks and a checkered flag.

for “charitable fund raising, namely, raising funds for breast cancer research and treatment”

Description: image of an awareness ribbon with a puzzle piece motif.

for “educational services, namely, conducting conferences, workshops, seminars, classes, and meetings in the field of autism and advocacy on behalf of autistic children and adults”

1202.17(e)(ii) Recycling Symbol
Description: image of Recycling symbol

The recycling symbol typically appears on materials to indicate that they are recyclable or made from recycled matter.See, e.g., About.com,Recycling Symbols Made Easy,http://greenliving.about.com/od/recyclingwaste/tp/recycling_symbols.htm(accessed Aug. 24, 2012). However, the symbol is also used in connection with a wide assortment of goods and services in a variety of fields to indicate that the goods or services involve recycling or are otherwise environmentally friendly.See id.

Because of the widespread use of the symbol and the resulting general recognition of the symbol’s significance, the symbol is not likely to function as a source indicator. Instead, the evidence will show consumers are likely to view it as merely providing information about the goods or services, in which case a failure-to-function refusal is appropriate. Even when the symbol is displayed on clothing and fashion accessories in a manner that would normally be considered trademark use, evidence will likely show the mark will be perceived as conveying an informational message (e.g., that the wearer supports recycling or environmental awareness).See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1230 (TTAB 2010) (holding that consumers would not view the “old and familiar” slogan ONCE A MARINE, ALWAYS A MARINE as a trademark indicating the source of the applicant’s clothing because they would be accustomed to seeing it displayed on clothing from many different sources, and noting that “[i]t is clear that clothing imprinted with this slogan would be purchased by consumers for the message it conveys”). The symbol will usually also have descriptive significance as applied to the relevant goods or services.

1202.17(e)(iii) Caduceus, Rod of Asclepius, and Prescription Symbol
Description: image of Caduceus symbol
Description: image of Serpent and Staff Symbol, also known as the Rod of Asclepius
Description: image of Prescription Symbol

The caduceus and the Rod of Asclepius are commonly used to indicate that goods or services are medical in nature or otherwise relate to the medical profession.See Webster’s New World College Dictionary 195 (3rd ed. 1997) (defining “caduceus” as “the staff of an ancient herald; esp., the winged staff with two serpents coiled about it . . . an emblematic staff like this with either one or two serpents, used as a symbol of the medical profession”); THEFREEDICTIONARY.COM, search of “Rod of Asclepius,”http://medical-dictionary.thefreedictionary.com/Rod+of+Asclepius(Aug. 24, 2012) (citingSegen’s Medical Dictionary) (defining “Rod of Asclepius” as “[t]he ‘correct’ symbol of medicine, which is a knarled [sic] wooden staff with a single encircling snake”). The prescription symbol is frequently used in connection with prescription drugs or medicated goods, or with services relating to these items.See Webster’s New World College Dictionary 1178 (3rd ed. 1997) (defining “Rx” as “symbol for PRESCRIPTION”). For any marks containing these symbols, the examining attorney should review the specimen, the relevant evidence, and the goods/services to determine if the mark functions as a source indicator or instead is merely informational. In those instances that the mark fails to function, there is likely also a valid basis for finding the symbol descriptive.

1202.17(e)(iv) Religious Symbols
Description: image of Latin Cross
Description: image of Star of David

Religious symbols, such as the Latin cross and the Star of David, may be informational or have descriptive significance when used on a variety of goods and services. For example, evidence may support the conclusion that, as used in connection with media such as books or videos, the Star of David is likely to be perceived as providing information about or describing the media’s content. Or evidence may show that a Latin cross used in an advertisement for services is likely to be viewed as conveying an informational message (i.e., indicating an affiliation with Christianity). Note that a mark containing a Greek cross (i.e., an upright equilateral cross) may be subject to other refusals.SeeTMEP §1205.01.

1202.17(e)(v) Currency Symbols
Description: image of Dollar sign
Description: image of Euro symbol

When used with financial services, such as currency exchange or banking, evidence will show currency symbols, such as the dollar sign or the euro symbol, will likely be informational and merely descriptive. However, when used in connection with other types of goods or services, the evidence may show these symbols to be arbitrary or suggestive and otherwise function as a mark.

1202.17(e)(vi) Universal Prohibition Symbol
Description: universal prohibion symbol

The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of “no,” “not,” or “prohibited.”See, e.g., Free Signage.com,Prohibition Signs,http://www.freesignage.com/prohibited_signs.php(accessed Aug. 24, 2012). When the prohibition symbol is superimposed over other matter, the design as a whole is unitary; thus, no disclaimer of the prohibition symbol apart from the other matter is necessary. However, the examining attorney must consider whether evidence supports the conclusion that the design as a whole (i.e., the symbol and the image it is superimposed over) fails to function as a mark or is merely descriptive (or both) and thus must be refused or disclaimed.

1202.18 Hashtag Marks

A “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#” (e.g., #chicago, #sewing, and #supremecourtdecisions). Hashtags are often used on social-networking sites to identify or facilitate a search for a keyword or topic of interest. See Dictionary.com, search of “hashtag,” http://dictionary.reference.com/browse/hashtag (June 19, 2013) (citingRandom House Dictionary).

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. SeeTMEP §1202 regarding the determination of whether a mark functions as a mark.

When examining a proposed mark containing the hash symbol, careful consideration should be given to the overall context of the mark, the placement of the hash symbol in the mark, the identified goods and services, and the specimen of use, if available. If the hash symbol immediately precedes numbers in a mark (#29 JONES, THE #1 APP, # TWELVE, etc.), or is used merely as the pound or number symbol in a mark (e.g., ICHIBAN#), such marks should not necessarily be construed as hashtag marks. This determination should be made on a case-by-case basis.

Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media (i.e., social-media participants are directed to search a particular subject by typing, e.g., “hashtag ABC,” where ABC is the subject).SeeIn re i.am.symbolic, llc, 127 USPQ2d 1627, 1633 (TTAB 2018) (noting that “the use of a hashtag in the social media context plays a functional role in facilitating searches on social media platforms” and that “a hash symbol . . . generally adds little or no source-indicating distinctiveness to a mark”):cf.In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009) (finding that the addition of a generic top-level-domain to an otherwise unregistrable mark does not typically add any source-identifying significance);Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 691, 66 USPQ2d 1321, 1327-28 (6th Cir. 2003) (finding that the post-domain path of a URL does not typically signify source).

Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.Cf.TMEP §807.14(c)(“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”);TMEP §1209.03(m) (addition of generic top-level domain name to otherwise unregistrable matter typically cannot render it registrable). Accordingly, if a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.

Example:

#SKATER for skateboarding equipment is merely descriptive

1202.18(a) Disclaiming HASHTAG or Hash Symbol

A mark may be registrable with a disclaimer of the wording HASHTAG or the hash symbol in cases where they are separable from other registrable matter. Therefore, if a mark consists of the hash symbol or the term HASHTAG combined with wording that is distinctive for the goods or services, the hash symbol or the term HASHTAG should be disclaimed.

Examples:

# INGENUITY for business consultation services is registrable with a disclaimer of the hash symbol

TMARKEY #SKATER for skateboarding equipment is registrable with a disclaimer of “# SKATER”

Cf.TMEP §1215.07 for further information and analogous examples.

When a mark containing the hash symbol or the term HASHTAG is unitary with other arbitrary or suggestive wording in the mark, (e.g., #SLUGGERTIME for clothing, #DADCHAT for counseling services, and HASHTAGWALKING for entertainment services), no descriptive or generic refusal or disclaimer is required. However, such marks must still be evaluated to confirm that they function as source indicators for the goods or services. If the specimen shows the hash symbol or the term HASHTAG in a proposed mark as merely a tag used to reference or organize keywords or topics of information to facilitate searching a topic, the relevant public will not view the hash symbol or the term HASHTAG in the mark as identifying the source of the goods or services. In such cases, registration must be refused under Trademark Act Sections 1, 2, and 45,15 U.S.C. §§10511052,1127, for trademarks, and Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127, for service marks.Cf. In re Roberts, 87 USPQ2d 1474 (TTAB 2008);In re Eilberg, 49 USPQ2d 1955 (TTAB 1998) ;TMEP §1215.02(a).

For example, if the proposed mark #SEWFUN for instruction in the field of sewing appears on a specimen comprising a screenshot of a social networking site used merely to organize users’ comments about sewing classes applicant offers, the mark must be refused registration for failure to function as a service mark.

1202.18(b) Marks Consisting Solely of HASHTAG or Hash Symbol

Sometimes, marks that consist solely of variants of the term HASHTAG or the hash symbol may function as a mark, such as when the mark will be used in connection with goods or services that do not relate to social networking. In these cases, the symbol and term HASHTAG may not create the commercial impression of being a metadata tag since they do not immediately precede other wording, and may be considered suggestive or arbitrary, depending on the associated goods and services (e.g., HASHTAG for use in connection with liquor or THE HASHTAG for providing office facilities).

1202.19 Repeating-Pattern Marks

A repeating-pattern mark is a mark composed of a single repeated element or a repeated combination of designs, numbers, letters, or other characters, forming a pattern that is displayed on the surface of goods, on product packaging, or on materials associated with the advertising or provision of services. The pattern may appear over the entire surface or on just a portion of the relevant item.

Repeating-pattern marks are often applied to clothing and fashion accessories, but they also appear on other goods, including furniture, bedding, dinnerware, luggage, paper products, and cleaning implements. In addition, these marks frequently appear on packaging for a variety of goods and have been registered for use in connection with services such as retail stores and travel agencies. For examples of repeating-pattern marks, seeTMEP §1202.19(k).

In a repeating-pattern mark, the repetition of the mark’s elements is a feature of the mark, which must be appropriately specified in the application.SeeTMEP §§1202.19(a),(b). The fact that the specimen shows the mark depicted in the drawing being used in a repetitive fashion on the relevant items is not, by itself, a sufficient basis for treating the mark as a repeating-pattern mark. That is, despite what is shown in the specimen, the applicant might not be seeking a registration in which repetition is a feature of the mark. Accordingly, there also must be some indication in the mark description or on the drawing to indicate that the mark consists of a repeating pattern.

If the nature of the mark is ambiguous, the examining attorney must seek clarification from the applicant through a Trademark Rule 2.61(b) requirement for information, or by telephone or e-mail communication, as appropriate. See37 C.F.R. §2.61(b);TMEP §814. Any clarification obtained through informal communication should be recorded in a Note to the File or in a subsequent Office action or examiner’s amendment.SeeTMEP §709.05.

A repeating pattern that is unique when used in connection with the relevant goods or services may be inherently distinctive.SeeTMEP §1202.19(e)(i)(A). However, because of the ornamental and typically nondistinctive nature of repeating patterns, consumers often do not perceive these patterns as source indicators, in which case they may not be registered on the Principal Register without proof of acquired distinctiveness.SeeTMEP §§1202.19(e)–(e)(iii).

1202.19(a) Drawing Requirements for Repeating-Pattern Marks

The drawing for a repeating-pattern mark must be a substantially exact representation of the mark.See37 C.F.R. §2.51;TMEP §§807.12–807.12(d). The impression created by a repeating pattern may change depending on a number of factors, including the nature of the pattern and the item it appears on, the particular placement of the pattern on the item, and the size and scale of the elements in the pattern as applied. Thus, in most cases, to accurately depict the mark, a drawing showing the particular manner of display and placement of the repeating pattern is necessary. A swatch-type drawing—one that does not show the particular placement of the mark but instead consists of a sample of the repeating pattern displayed within a square, rectangle, or other geometric shape—is acceptable only under certain circumstances. SeeTMEP §1202.19(a)(iii) for additional information on swatch-type drawings.

1202.19(a)(i) Mark Used on a Single Item

The drawing for a repeating-pattern mark applied in a particular manner to a single item must depict the pattern as it appears on the item. Thus, if the pattern appears only on a portion of the item, the drawing must show the pattern’s placement on that portion. If the pattern appears over the entire surface of the item, the drawing must depict the pattern accordingly. The shape of the item must appear in broken lines to indicate that it is not claimed as part of the mark.37 C.F.R. §2.52(b)(4);TMEP §807.08. If the drawing shows the item in solid lines, the USPTO will interpret the drawing as indicating that the proposed mark is a composite mark consisting of both the repeating pattern and the shape of the item to which it is applied.Cf.TMEP §1202.05(d)(i).

If it is unclear what portions of the drawing are claimed as part of the mark, the examining attorney must seek clarification from the applicant through a Trademark Rule 2.61(b) requirement for information, or by telephone or e-mail communication, as appropriate.See37 C.F.R. 2.61(b);TMEP §§709.05,814. Based on that clarification, the examining attorney must also require the appropriate amendments to the drawing and mark description.

SeeTMEP §§1202.19(f)–(f)(ii) regarding the relevant examination procedures when an application identifies goods that are inconsistent with the depiction of the mark in the drawing.

1202.19(a)(ii) Mark Used in a Similar Manner on Similar Items

If the repeating pattern will be applied to multiple goods, a drawing showing the pattern’s placement on one of the goods is appropriate if all of the identified goods are similar in form and function, and the mark will appear in a similar manner on all of the goods. Under these circumstances, a depiction of one of the goods may be considered a substantially exact representation of the mark as used on all of the goods. For example, if a repeating pattern is used in a similar manner on similarly shaped purses of various sizes, a drawing showing the repeating pattern on one version of the purses (shown in broken lines) would be acceptable. Another example is a repeating-pattern mark that is applied in the same manner to the handles of forks, spoons, and knives. In that case, a drawing that depicts the mark on one of the items (shown in broken lines) would be acceptable.

Likewise, if the repeating-pattern mark will appear in a similar manner on various sizes of similarly shaped product packaging, then a drawing showing the mark appearing on one version of the packaging depicted in broken lines is acceptable.

1202.19(a)(iii) Mark Used in Various Ways or on Various Items ─ Swatch-Type Drawings

Sometimes an applicant uses, or intends to use, a repeating-pattern mark in various ways on the same or similar items, or in similar or different ways on a variety of items. In those circumstances, a drawing depicting the mark appearing on a particular item will not accurately depict the mark and the nature of its use.

Previously, to address this issue, applicants have submitted swatch-type drawings, which do not show a particular placement of the mark, but instead consist of a sample of the repeating pattern within a square, rectangle, or other geometric shape. These swatch-type drawings usually will not adequately depict the nature of the mark for which registration is sought, because the impression created by a repeating pattern may change depending on the nature of the pattern, the type of item on which the pattern appears, the particular placement of the pattern on that item, and the size and scale of the elements in the pattern as applied. Accordingly, these swatch-type drawings could encompass multiple versions of the mark, each of which may convey a different commercial impression. Therefore, such swatch-type drawings are usually not appropriate for repeating-pattern marks, and examining attorneys generally should not accept them.

However, a swatch-type drawing is acceptable if the applicant shows with sufficient evidence that (1) the applied-for mark is actually used, or will be used, in various ways or on a variety of different items, but (2) it will nonetheless be perceived as a source indicator and create the same commercial impression across all uses.

The evidence of variable use need not show every use of the repeated pattern on the relevant items, but it should provide a reasonable basis for concluding that the use of the mark in connection with the identified goods or services is so varied that a single depiction of the mark on a particular item would not accurately reflect the nature of the mark. For applications not based on use in commerce, the evidence should indicate the applicant’s intention to use the mark in various ways or on a variety of different items. This may include declarations, marketing materials, and other similar matter.

The evidence as to the commercial impression must be substantial and must establish that the pattern will be perceived as a source indicator and create the same commercial impression in the minds of consumers. Relevant evidence may include consumer declarations; advertisements or other materials showing various instances of the pattern being used together in one place (e.g., a single advertisement that shows the pattern being used in various ways on various goods, but nonetheless projecting the same commercial impression); sales figures relevant to the various items featuring the pattern; and any other evidence of the applicant’s efforts to promote the various uses of the repeating pattern as a single source indicator for the relevant goods or services, including “look-for”-type evidence. Although the evidence listed above is similar to evidence that would be submitted in support of an acquired-distinctiveness claim, here the examining attorney’s determination is focused not on whether the mark has acquired distinctiveness but on whether the use or intended use of the mark, and the likely consumer perception of it, satisfy the specified conditions for acceptance of a swatch-type drawing.

Even if these conditions are satisfied, an examining attorney must also consider the applied-for mark’s distinctiveness. For example, to support a swatch-type drawing for such varied goods as “business card cases; coin purses; cosmetic cases sold empty; dog collars; cog leashes; handbags; luggage tags; overnight bags; pet clothing; umbrellas; wallets; and wristlet bags” the applicant might submit some or all the following: a statement that the mark had been used for more than 10 years on hangtags, packaging, promotional materials, and across various product categories; evidence showing that it is a common practice in the industry for fashion brands to develop signature patterns; examples of pattern designs in the industry that have become well-recognized as source indicators; news articles and website excerpts touting the mark in connection with the applicant; examples of the mark in use on packaging, shopping bags, hangtags, and promotional materials; examples of various products featuring the mark; a declaration indicating substantial sales of products, packaging, or hangtags featuring the mark, as well as significant marketing expenditures relating to promotion of products featuring the repeating pattern. While this kind of evidence might be submitted to support a claim of acquired distinctiveness, it is also the kind of evidence that may support the submission of a swatch-type drawing, because it shows that the repeating-pattern mark is used in various ways on a variety of items and that the repeating pattern would be perceived as a source indicator and create in the minds of consumers the same commercial impression across that pattern’s various uses.

If the applicant has submitted a swatch-type drawing but the evidence of record does not establish that a swatch-type drawing is appropriate, the examining attorney must refuse registration on the ground that the application seeks registration of more than one mark. SeeTMEP §§1202.19(g)–(g)(ii).

1202.19(a)(iv) Drawings for Service Marks

Repeating-pattern marks are used as service marks in a variety of ways. For instance, a repeating-pattern mark could be displayed on a retail store’s façade, on a customer loyalty card, on advertising materials, or on shopping bags.

If a repeating pattern appears on elements in a service setting in a manner that makes a single commercial impression, such as a pattern that is displayed on the various architectural features or other fixtures of a retail outlet, a drawing of the setting should be submitted, along with a detailed description of the mark that specifies the location and manner of use of the repeating pattern.Cf.TMEP §1202.05(d)(ii) (“If color is used in a variety of ways, but in a setting that makes a single commercial impression, such as a retail outlet with various color features, a broken-line drawing of the setting must be submitted, with a detailed description of the mark claiming the color(s) and describing the location of the color(s).”)

The drawing must depict in broken lines those elements of the environment that display the repeating pattern but are not claimed as a feature of the mark.See37 C.F.R. §2.52(b)(4);TMEP §807.08.

Otherwise, if the mark is used on a particular item, or is used in a similar manner on multiple items that are similar in form and function, and can thus be adequately represented by a depiction of a single item, a drawing consisting of the mark appearing on a single item is appropriate.SeeTMEP §§1202.19(a)(i)–(ii).

The conditions for accepting a swatch-type drawing for repeating-pattern marks used in connection with services are the same as those explained inTMEP §1202.19(a)(iii).

1202.19(b) Mark Descriptions for Repeating-Pattern Marks

The mark description must accurately describe the mark.SeeTMEP §808.02. Thus, the description for a repeating-pattern mark must indicate that the mark consists of a pattern. Although the description must identify the various elements of the pattern, it is not necessary to describe their exact placement within the pattern; it is sufficient for the description to generally characterize the elements and indicate that they are repeated.See id.

In addition, the description must specify how the pattern will appear on the relevant items. Thus, if the pattern is applied only to a portion of the relevant goods, packaging, or other items, the description must specify that portion. If the pattern is repeated over the entire surface of the relevant items, the description must so indicate. And, if the pattern is displayed in various ways on the relevant items (seeTMEP §1202.19(a)(iii)), then the mark description must include wording to that effect. For example, in the latter instance, the following description would be acceptable: “The mark consists of a repeating pattern of stars and circles used on various portions of the product packaging for the identified goods.”

The mark description must also describe any portions of the mark that are shown in broken lines and thus are not claimed as a feature of the mark.See37 C.F.R. §2.52(b)(4);TMEP §807.08. For repeating patterns featuring color, the application must include an appropriate color claim and the description must indicate where the claimed colors appear.37 C.F.R. §2.52(b)(1).

The mark description for a repeating-pattern mark must always be printed on the registration certificate.SeeTMEP §808.03.

1202.19(c) Material Alteration of Repeating-Pattern Marks
1202.19(c)(i) Amending the Drawing to Depict a Different Object

Generally, when the original drawing depicts the repeating pattern appearing on a particular object, amending the drawing to show the pattern appearing on a significantly different object will be considered a material alteration. Thus, if the original drawing shows the repeating pattern appearing on the outer surface of a purse, for example, it may not be amended to show the mark appearing on the handle of a walking cane.

However, if the mark will appear in a similar manner on similar items, so that a depiction of only one of the items is a substantially exact representation of the mark as used on all of the items, the applicant may amend the drawing from a depiction of one of the items to a depiction of another of the items, assuming the shape of the items is not claimed as a feature of the mark and the specimen of use or foreign registration certificate supports the amendment.See37 C.F.R. §2.72;TMEP §807.13. For instance, it would not be a material alteration to amend a drawing that shows the pattern appearing on the handle of a spoon shown in broken lines to show the pattern on the handle of a fork shown in broken lines. However, any item depicted in the drawing must be consistent with the identification of goods or services.SeeTMEP §1202.19(f).

1202.19(c)(ii) Amending a Swatch-Type Drawing to Show an Object and Vice Versa

When the original drawing is a swatch-type drawing showing the elements of the pattern within a square, rectangle, or other generic geometric shape (seeTMEP §1202.19(a)(iii)), the drawing may be amended to show the pattern appearing on a particular item, if necessary and otherwise appropriate.SeeTMEP §807.13. However, amending from a drawing showing the pattern on a particular object to a swatch-type drawing usually will be a material alteration, especially when the elements comprising the pattern are nondistinctive.

1202.19(c)(iii) Amending the Drawing to Depict a Different Placement of the Repeating Pattern

When the original drawing shows the repeating pattern displayed in a particular manner on an object, amending the drawing to show the pattern being displayed in a significantly different manner on the same object may be a material alteration. For instance, a drawing that shows the repeating pattern on the outer bill of a cap may not be amended to show the pattern on the inner lining of the cap. However, a minor change to the placement of a repeating pattern on an object should not be considered a material alteration.

1202.19(c)(iv) Amending Descriptions of Repeating-Pattern Marks

An applicant may not amend a mark description if the amendment would describe a materially different mark than what was depicted in the original drawing.See37 C.F.R. §2.72;In re Thrifty Inc. 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (finding applicant’s proposed amendment to the mark description was a material alteration of the drawing because the “multiple impressions created by the wide variety of objects sought to be covered under the proposed description differ significantly from the original mark of a color placed on a building”).

For applications in which the original drawing is a swatch-type drawing (seeTMEP §1202.19(a)(iii)) and the original mark description indicates that the pattern is used a variety of ways, an applicant may amend the mark description to indicate that the pattern appears in a particular manner on a particular item, in accordance with a corresponding drawing amendment. These amendments are not considered material alterations. In these instances, the applicant may also be required to amend the identification of goods or services to delete any items that are inconsistent with the drawing. SeeTMEP §1202.19(f).

1202.19(c)(v) Amendments in Applications Based on Section 44 or Section 66(a)

For applications based on Section 44 or Section 66(a), any amendments must conform to the rules and procedures governing these types of applications.See, e.g.,TMEP §§1011.01 (“substantially exact representation standard” for drawings in §44-based applications),1011.03 (amendment of drawings in §44-based applications),1904.02(j)(amendment of marks in §66(a)-based applications),1904.02(k) (drawings and descriptions in §66(a)-based applications).

1202.19(d) Specimens for Repeating-Pattern Marks

As with other types of marks, the specimen of use for a repeating-pattern mark must show use of the mark as depicted in the drawing and described in the mark description. See TMEP §§904,904.07(a),1301.04(g)(i).

When a repeating pattern is applied to a single item, and the drawing thus depicts the repeating pattern on that item (seeTMEP §1202.19(a)(i)), the specimen should show the pattern displayed on the same item or a substantially similar item. In addition, the placement of the pattern on the object in the specimen should be consistent with the placement as depicted in the drawing and specified in the description.

When a repeating pattern is applied in the same manner to similar items and thus a drawing depicting one of the items is appropriate (seeTMEP §1202.19(a)(ii)), the specimen of use need not show the item depicted in the drawing, assuming the shape of the item in the drawing is not claimed as a feature of the mark. However, the object shown in the specimen must be sufficiently similar to the item in the drawing, such that the drawing is a substantially exact representation of the mark as actually used.SeeTMEP §1202.19(a)(ii). In addition, if the mark is applied to goods, the good shown in the specimen must be encompassed by the identification of goods. Thus, if the identified goods are spoons, forks, and knives, and the drawing shows the repeating pattern appearing on the handle of a spoon shown in broken lines, a specimen showing the same pattern in the same manner on the handle of a fork would be acceptable. SeeTMEP §§1202.19(f)–(f)(ii) for a discussion of the relevant examination procedures when the identified goods or services are inconsistent with the drawing.

When the drawing is a swatch-type drawing, and the examining attorney has determined that the drawing is appropriate (seeTMEP §1202.19(a)(iii)), a specimen showing the pattern appearing on a particular object should be considered to match the drawing if the overall commercial impression created by the pattern is the same.

The fact that the specimen shows the mark depicted in the drawing being used in a repetitive fashion on the relevant items is not, by itself, a sufficient basis for treating the applied-for mark as a repeating-pattern mark. There must be some indication in the mark description or drawing to indicate that the mark consists of a repeating pattern.

If necessary, examining attorneys may require additional specimens to determine whether the applied-for mark functions as a trademark or service mark for all of the identified goods or services.See37 C.F.R. §2.61(b);TMEP §904.01(a). For example, additional specimens may be necessary when the identified goods include items that are significantly different from the goods shown in the originally submitted specimen, such that it is not clear how the mark is used on all of the goods.

1202.19(e) Failure-to-Function Refusal – Mark Not Inherently Distinctive

The USPTO will not register an applied-for mark unless it functions as a mark.See15 U.S.C. §§10511052,1053,1127;In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976) (“Before there can be registration, there must be a trademark . . . .”);In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) (“Registration presupposes the existence of a trademark to be registered.”);TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others.See15 U.S.C.  §1127;TMEP §1202.

The examining attorney must determine whether a repeating-pattern mark functions as a trademark or service mark by reviewing the available evidence, including the specimen and any other materials of record.See In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (“Since the specimens of record show how the applied-for mark is actually used in commerce, we must primarily look to the specimens to see if the designation would be perceived as a source indicator. However, we may also consider other evidence bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.”).

Not every designation that a party places on goods or packaging, or uses in connection with services, is an inherently distinctive source indicator, regardless of the party’s intentions when adopting the designation.In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) ;In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) (“As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself.”). Some designations are not capable of serving as a source indicator.See In re Eagle Crest, Inc., 96 USPQ2d at 1229;Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973) .

1202.19(e)(i) Inherent Distinctiveness Determination

Because repeating patterns frequently serve an ornamental function in various contexts, they are often not inherently distinctive when applied to goods, packaging, or materials associated with services. Instead, consumers may perceive these patterns as nothing more than ornamentation or background matter serving no source-indicating function. Thus, determining whether a repeating-pattern mark is inherently distinctive and functions as a source indicator involves considering the impression created when the mark is used in connection with the identified goods or services.See In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (“A critical element in determining whether matter sought to be registered is a trademark is the impression the matter makes on the relevant public. Thus . . . the critical inquiry is whether the asserted mark would be perceived as a source indicator. . . . To be a mark, the term must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods. . . . We determine whether this has been achieved by examining the specimens of use along with any other relevant material submitted by applicant during prosecution of the application.”).

Relevant considerations when determining inherent distinctiveness include those discussed below.

1202.19(e)(i)(A) Common or Widely Used Pattern

Evidence showing that the repeating pattern in the applied-for mark is similar to, or a mere refinement or variation of, a common pattern or a pattern that is widely used on the relevant items, may support the conclusion that the applied-for mark is not inherently distinctive.See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977) .

On the other hand, if the nature of the repeating pattern is unique or unusual as applied to the relevant items, a finding of inherent distinctiveness may be appropriate.See Seabrook Foods, Inc., 568 F.2d at 1344, 196 USPQ at 291.

However, the mere fact that the applicant is the only user of the particular repeating pattern is not dispositive as to the inherent distinctiveness of a mark featuring that pattern.See In re E S Robbins Corp., 30 USPQ2d 1540, 1543 (TTAB 1992) (“If the concept of inherent distinctiveness was defined as meaning simply ‘one and only,’ then one could obtain a registration for a design which, while ‘unique’ in this sense, differed only slightly from the designs of other competing products and/or containers.”). The examining attorney must weigh this factor together with any other relevant factors.

1202.19(e)(i)(B) Pattern Creates a Distinct Commercial Impression Apart from Other Matter

The examining attorney should consider whether the pattern creates a commercial impression distinct from any wording or other matter that may also appear on the relevant items.See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977). If so, this weighs in favor of finding the pattern inherently distinctive.

1202.19(e)(i)(C) Nature of Elements in the Repeating Pattern

If a repeating-pattern mark contains an element, such as arbitrary wording, which would be perceived as a source indicator if it were to appear by itself, then the relevant consumers may be more likely to perceive the repeating pattern as a source indicator.

1202.19(e)(i)(D) Industry Practice

Purchasers are unlikely to view a repeating-pattern mark as an indicator of source if the relevant industry practice is to use repeating patterns in an ornamental fashion with the relevant goods or services. However, if, because of common industry practice, consumers have come to view repeating patterns on the surface of the relevant goods, packaging, or other materials as an indicator of source, and the applied-for mark is more than common background matter, then a finding that the mark is inherently distinctive may be appropriate.

1202.19(e)(i)(E) Type of Product

The type of item the mark is applied to affects whether consumers perceive the repeating pattern as a mark rather than merely as ornamental or other nondistinctive matter. For example, when repeating patterns appear on items such as clothing, curtains, pillows, bedding, carpet, furniture, and stationery, the patterns are likely to be perceived as decoration because those types of goods are typically purchased or used, at least in part, for their aesthetic appeal. On the other hand, if the type of item the mark is applied to does not usually feature decorative matter, or is not usually purchased or used for its decorative features, like power tools, industrial machinery, or surgical equipment, a repeating pattern may be more likely to be perceived as a source indicator.

1202.19(e)(ii) Statutory Basis for Refusal

When the applicant has sought registration of a repeating-pattern mark on the Principal Register without claiming acquired distinctiveness, and the examining attorney determines that the mark is not inherently distinctive, registration must be refused on the ground that the mark fails to function as a source indicator, citing Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks.See15 U.S.C. §§10511052,1053,1127. The examining attorney must explain the specific reasons for the refusal and provide relevant supporting evidence.SeeTMEP §1202. The stated reason for refusal will usually be that the applied-for mark is merely ornamental as used on or in connection with the goods or services. However, in some instances, the applied-for repeating-pattern mark may be simply nondistinctive, serving neither an ornamental nor a source-indicating purpose. In either case, the same statutory bases apply.

If registration is sought on the Supplemental Register, but the examining attorney determines that the mark is incapable of serving as a source indicator, registration must be refused on that ground under Trademark Act §§23 and 45.15 U.S.C. §§10911127.

1202.19(e)(iii) Response Options

If an applied-for mark is capable of serving as a source indicator, the applicant may respond to the refusal by submitting a substitute specimen showing use of the mark as a trademark or service mark, amending to the Supplemental Register, or claiming acquired distinctiveness under Trademark Act Section 2(f), if otherwise appropriate. For repeating-pattern marks that are capable of serving as source indicators but are not inherently distinctive, evidence of five years’ use, by itself, is insufficient to show acquired distinctiveness.SeeTMEP §1212.05(a). That is, actual evidence showing that consumers have come to recognize the applied-for mark as a source indicator will be required to establish acquired distinctiveness.See id.

Furthermore, for repeating-pattern marks used on goods, any showing of acquired distinctiveness must be made with respect to all of the identified goods for which the examining attorney has determined the mark is not inherently distinctive. For repeating-pattern marks used in connection with services, the evidence of acquired distinctiveness must establish that the mark, as used on all of the relevant items, has come to be perceived as a source indicator for the identified services.

SeeTMEP §816 regarding amendment to the Supplemental Register andTMEP §§1212-1212.10 regarding claims of acquired distinctiveness.

The applicant may also submit evidence of secondary source to establish that a repeating-pattern mark primarily serves a source-indicating function rather than merely serving as ornamentation. As discussed inTMEP §1202.03(c), there are a number of acceptable types of evidence for showing secondary source, such as proof of ownership of a use-based U.S. registration on the Principal Register for the same mark covering other goods or services. However, evidence of a series of ornamental uses of a repeating-pattern mark on various items will not establish that the proposed mark functions as an indicator of secondary source; use as a trademark or service mark for the other goods or services must be shown.TMEP §1202.03(c);see also In re Astro-Gods Inc., 223 USPQ 621, 622-24 (TTAB 1984) .

1202.19(f) Failure-to-Function Refusal – Inconsistent Goods or Services

When the drawing shows the repeating pattern appearing on an item, the examining attorney must determine whether all of the identified goods or services are consistent with the item depicted, such that the mark shown accurately reflects how the mark appears on all of the identified goods and services and could actually serve as a source indicator for them.

For example, in an application that depicts the mark as a repeating pattern appearing on the bill of a baseball cap shown in broken lines, the cap is not part of the mark, but the drawing nonetheless limits the mark to the particular manner of use shown. Thus, if the application identifies the goods as baseball caps, shoes, eyeglasses, and purses, the identified baseball caps are consistent with the drawing, but the identified shoes, eyeglasses, and purses are not, because the mark obviously cannot be applied to those goods in the manner depicted in the drawing. If, on the other hand, the drawing depicts a repeating pattern applied to the handle of a hand rake, any other similar type of implement with a handle that is listed in the identification of goods should be considered to be consistent with the drawing.

If the drawing shows the repeating-pattern mark appearing on packaging for goods, the identified goods should be considered consistent with the drawing if they could be sold in the packaging shown. For instance, if the packaging shown is a bottle, then goods that are not normally packaged in a bottle should be considered inconsistent with the nature of the mark as depicted in the drawing, assuming there is no evidence that the applicant’s goods actually are packaged in that manner.

The fact that an application identifies services, but contains a drawing showing the mark applied to a particular object, does not necessarily raise an issue of inconsistency. Marks of this nature may function as source indicators for services. For example, a repeating pattern applied in a particular manner to the exterior of an airplane could be perceived as a source indicator for airline transportation services. However, if the application identifies both goods and services, the examining attorney must consider whether the mark shown in the drawing could actually function as both a trademark for the identified goods and a service mark for the identified services.

The determination of whether all of the identified goods or services are consistent with the drawing is distinct from the determination of whether the drawing agrees with the specimen of record.SeeTMEP §1202.19(d). Thus, if the application contains specimens showing that the drawing is not a substantially exact representation of the mark as used on the goods or packaging, or in connection with the services, the examining attorney must also issue any applicable requirement or refusal on that basis.SeeTMEP §807.12(a).

1202.19(f)(i) Statutory Basis for Refusal

If the examining attorney determines that any of the identified goods or services are inconsistent with the drawing, the examining attorney must refuse registration as to those goods or services on the ground that the mark, as depicted in the drawing, fails to function as a mark for them.Cf.TMEP §§1202.02(f)(i),1202.02(f)(ii). The statutory bases for the refusal are Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. See15 U.S.C. §§10511052,1053,1127.

1202.19(f)(ii) Response Options

The applicant may overcome the refusal by deleting the inconsistent goods or services, or by submitting evidence that the mark, as depicted in the drawing, does in fact function as a mark for the relevant goods or services. In most instances, the applicant will be unable to overcome the refusal by amending the drawing to cover all of the identified goods or services because it will be impossible to do so using a single depiction of the mark and the necessary changes are likely to result in a material alteration of the mark on the original drawing.SeeTMEP §1202.19(c). In addition, dividing out the inconsistent goods or services typically is not an appropriate response option in these cases because the drawing in the child application would need to depict an essentially different mark, which would also be a material alteration of the mark in the original drawing.

1202.19(g) Refusal – Application Seeks Registration of More than One Mark

As explained inTMEP §1202.19(a)(iii), a swatch-type drawing is acceptable only if the applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of the repeating pattern nonetheless create the same commercial impression.

1202.19(g)(i) Statutory Basis for Refusal

In the absence of the evidentiary showing discussed inTMEP §1202.19(a)(iii), a swatch-type drawing is deemed to encompass numerous versions of the mark, each of which may create a different commercial impression, and thus the examining attorney must refuse registration under Trademark Act Sections 1 and 45,15 U.S.C. §§10511127, on the ground that the application seeks registration of more than one mark.See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999) (“[U]nder the Lanham Act and the rules promulgated thereunder, a trademark application may only seek to register asingle mark.”);TMEP §1214.01;cf. In re Hayes, 62 USPQ2d 1443, 1445 (TTAB 2002) (noting that a trademark application may only seek to register a single mark and affirming refusal of registration on the basis that applicant’s mark description described more than one mark);In re The Upper Deck Co., 59 USPQ2d 1688, 1689-91 (TTAB 2001) (affirming refusal to register a mark described as “a hologram device which is applied to . . . trading cards” because the mark could encompass many different holograms having various shapes, sizes, and contents, and thus the application sought to register more than a single mark);In re Elvis Presley Enters., 50 USPQ2d 1632, 1633-34 (TTAB 1999) (affirming refusal to register a mark described as “the likeness and image of Elvis Presley” because the drawing failed to convey a substantially exact representation of the mark and, given that the mark could encompass numerous likenesses of Elvis, the application sought to register more than a single mark).

1202.19(g)(ii) Response Options

In response to this refusal, the applicant may amend the swatch-type drawing to depict the mark on a particular item; amend the mark description to describe the placement of the mark on that item; and, if necessary, amend the identification to delete any goods or services that are inconsistent with the drawing (seeTMEP §1202.19(f)).

1202.19(h) Refusals in Applications Based on Section 1(b), Section 44, or Section 66(a)

The refusals discussed inTMEP §§1202.19(e)–(g)(ii) may also apply to applications based on Trademark Act §1(b), §44, or §66(a) if the information in the application or any other available evidence indicates that the applied-for mark fails to function as a trademark or service mark; that the identification includes goods or services that are inconsistent with the mark as depicted in the drawing; or that the application seeks registration of more than one mark.SeeTMEP §1202;cf. In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, “it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark”);TMEP §1202.02(f)(i).

For §1(b) applications, if the examining attorney anticipates issuing a failure-to-function refusal once an allegation of use is filed, the examining attorney should advise the applicant of the potential refusal if otherwise issuing an Office action.SeeTMEP §1202. However, failure to provide an advisory does not preclude the examining attorney from subsequently issuing a refusal.See id.

With respect to applications based on §44 or §66(a), examining attorneys must adhere to the relevant rules and procedures governing these types of applications, including those pertaining to drawing amendments and acceptable response options.See, e.g.,TMEP §§801.02(b) (Supplemental Register not an option for §66(a) requests for extension of protection),1010 (proof of acquired distinctiveness in §44-based applications),1011.01 (“substantially exact representation standard” for drawings in §44-based applications),1011.03 (amendment of drawings in §44-based applications),1904.02(g)(time period for issuing a refusal of a §66(a)-based application),1904.02(j) (amendment of marks in §66(a)-based applications),1904.02(k)(drawings and descriptions in §66(a)-based applications).

1202.19(i) Functional Repeating Patterns

It is possible, although rare, that a repeating pattern applied to the surface of an item will serve a functional purpose. This could be a utilitarian function, which is essential to the use of the item or affects the cost or quality of the item, or an aesthetic function, which does not have a truly utilitarian function in terms of the item’s use or performance, but nonetheless provides a real and significant competitive advantage. SeeTMEP §§1202.02(a)(iii)(A),1202.02(a)(vi). For example, a repeating pattern could function as camouflage for a product that requires concealment (utilitarian functionality). Or a repeating pattern could make a product more aesthetically desirable, beyond mere ornamentation, by allowing the product to be visually coordinated with a variety of other related items (aesthetic functionality).See Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531-1533, 32 USPQ2d 1120, 1122-1124 (Fed. Cir. 1994) (affirming TTAB’s determination that the color black on the surface of outboard motors is functional because, while it has no utilitarian effect on the mechanical purpose of the engines, it does provide other identifiable competitive advantages, including compatibility with a wide variety of boat colors and reduction in the perceived size of the engines). If the available evidence supports the conclusion that a repeating-pattern mark is functional, the examining attorney must refuse registration accordingly. SeeTMEP §§1202.02(a)–(a)(viii) regarding functionality and the procedures for refusing registration.

1202.19(j) Random Patterns

The foregoing guidance on repeating patterns also generally applies to marks consisting of random or fractal patterns, that is, patterns in which the relevant elements are not repeated in a set or easily recognized way. However, examining attorneys must carefully review the drawing, mark description, and specimen of use for this type of mark to ensure not only that the application accurately depicts and describes the mark, but also that the mark creates the impression of a single mark.

1202.19(k) Examples of Repeating-Pattern Marks

Registered Repeating-Pattern Marks

Example 1

U.S. Registration No. 3826587 (Supplemental Register)

Mark consisting of a repeating pattern of hexagonal shapes on the inner lining of a shoe upper.

Mark

Shoes featuring a repeating pattern of hexagonal shapes on the inner lining of the shoe uppers.

Specimen

Mark Description: “The mark consists of a repeating pattern of hexagonal shapes printed or stitched on the inner lining of shoe uppers. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark on the goods.”

Goods: Shoes, in International Class 25.

Note: Although the shape of the shoe in the drawing differs slightly from the shape of the shoe in the specimen, the drawing is a substantially exact representation of the mark as used on the goods.

Example 2

U.S. Registration No. 3679828 (Principal Register – §2(f))

A mark drawing showing a mark consisting of a repeating diamond pattern appearing on the cloth speaker grill of a musical instrument amplifier.

Mark

Specimen showing the mark appearing on the grill of a musical instrument amplifier.

Specimen

Mark Description: “The mark consists of a repetitive diamond pattern on the cloth speaker grill of a musical instrument amplifier. The dotted lines shown on the drawing are for purposes of positioning only and do not comprise a feature of the mark.”

Goods: Musical instrument amplifiers, in International Class 9.

Note: The application for this mark included a large amount of evidence to establish that the mark had acquired distinctiveness as a source indicator, including samples of marketing materials, excerpts from publications, and numerous consumer declarations.

Example 3

U.S. Registration No. 3342382 (Principal Register - Cancelled)

Mark drawing depicting a watch face featuring a repeating pattern of the letters A and V.

Mark

Specimen consisting of a photograph showing a watch face featuring a repeating pattern of the letters A and V.

Specimen

Mark Description: “The mark consists of a repeating pattern of ‘AV’ on the face of a watch.”

Goods: Watches, in International Class 14.

Note: The drawing shows the outline of the watch in broken lines, but the mark description does not specify the meaning of the broken lines. As indicated inTMEP §§807.08and 1202.19(b), descriptions of marks containing broken lines must indicate the significance of the lines.

Example 4

U.S. Registration No. 4100365 (Supplemental Register)

Mark drawing depicting a plaid design located on and covering the entire perimeter of the side border of a mattress.

Mark

Mark Description: “The mark consists of a plaid design located on and covering the entire perimeter of the side border of a mattress, the plaid design comprising a repeat pattern no larger than approximately 1 to 1.6 inches in both its horizontal and vertical dimensions. The matter shown in dotted lines is not part of the mark but merely serves to show the placement of the mark on the goods.”

Goods: Mattresses, in International Class 20.

Note: Although the entire shape in the drawing here is not depicted in broken lines, as indicated inTMEP §§807.08and1202.19(a)(i), broken lines must be used to indicate the shape of an item depicted in a drawing if the shape is not claimed as part of the mark.

Example 5

U.S. Registration No. 1251171 (Principal Register)

Mark drawing depicting a mailing envelop featuring a horizontal strip displaying the words ‘Rip-N-Zip’ repeated in a diagonal pattern.

Mark

Mark Description: “The mark consists of a design showing the words ‘Rip-N-Zip’ repeated in a diagonal pattern along a strip extending across the upper portion of the multiwall bags.”

Goods: Reclosable Multiwall Bags, in International Class 22.

Note: The drawing shows the outline of the goods in broken lines, but the mark description does not specify the meaning of the broken lines. As indicated inTMEP §§807.08and1202.19(a)(i), marks containing broken lines must indicate the significance of the lines (e.g., that they indicate matter that is not part of the mark).

Example 6

U.S. Registration No. 2963354 (Principal Register)

Specimen consisting of a photograph showing the word “Dior” repeated diagonally on a portion of a mascara container.

Mark

Mark drawing consisting of a square swatch showing the word “Dior” repeated diagonally.

Specimen

Goods: Perfumery; cosmetics, in International Class 3.

Note: Here, the repeating pattern is not a common, widely used pattern, but is instead composed of a stylized depiction of the wording DIOR. Furthermore, the pattern is placed only on part of the goods, in a place where a trademark might appear. Although a repeated pattern often produces an ornamental effect, the repeated element here is distinctive and could serve as a source indicator if presented in a single instance, rather than being repeated. Accordingly, the mark is, as used on the goods, inherently distinctive.SeeTMEP §§1202.19(e)(i)–(e)(i)(E).

Although this registration does not include a mark description, underTMEP §§808.02and1202.19(b), a mark description for a repeating-pattern mark must accurately describe the elements that appear in the mark and indicate that they are repeated. In addition, to use a swatch-type drawing like the one shown here, the applicant must satisfy the requirements described inTMEP §1202.19(a)(iii). Otherwise, a drawing showing placement on the relevant item is required.SeeTMEP §1202.19(g)(ii).

Making Inherent Distinctiveness and Inconsistent Goods/Services Determinations

The following mock example is provided to illustrate concepts involved in determining whether a mark is inherently distinctive and whether the identified goods or services are consistent with the drawing. SeeTMEP §§1202.19(e)(i)–(e)(i)(E) and1202.19(f) for additional information.

Drawing depicting a repeating houndstooth pattern applied to the entire exterior surface  of the side and end panels of a handbag.

Mark

Mark Description: The mark consists of a repeated houndstooth pattern applied to the entire exterior surface of the side and end panels of a handbag. The matter shown in broken lines is not part of the mark and serves only to show the placement of the mark on the goods.

Goods: Handbags; purses; walking canes, in International Class 18.

Note: Although source-indicating matter is often displayed in a repetitive manner on the surface of handbags and purses, here the mark consists of a common pattern, houndstooth, which is widely used on clothing, fashion accessories, household items, and many other goods. There is nothing unusual or distinctive about the manner in which this common pattern is displayed or placed, and thus the pattern will likely be perceived as purely ornamental. Therefore, the mark is not inherently distinctive and does not function as a source indicator for the goods.SeeTMEP §§1202.19(e)(i)–(e)(i)(E).

In addition, some of the identified goods are inconsistent with the drawing. While the handbag shown in the drawing is not part of the mark, the drawing nonetheless limits the mark to the particular manner of use shown. The mark could be applied in the manner shown to handbags and purses, but not to walking canes. Therefore, it is appropriate to refuse registration of the mark as to “walking canes” on the ground that the mark, as depicted in the drawing, fails to function as a mark for those goods.SeeTMEP §§1202.19(f)–(f)(ii).

While the pattern shown in this mock example is not distinctive as depicted in the drawing, it is possible for a commonly used pattern to be inherently distinctive, or to otherwise acquire distinctiveness, if it is used in an unusual manner on the goods, such as when the pattern appears in a unique way on a particular portion of the goods.

1203 Refusal on Basis of Immoral or Scandalous Matter; Deceptive Matter; Matter which May Falsely Suggest a Connection

15 U.S.C. §1052  (Extract)

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–

  • (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which maydisparage orfalsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.

*****

The provisions of15 U.S.C. §1052(a)  apply to both the Principal Register and the Supplemental Register. Note, however, that inMatal v. Tam, 582 U.S. ___ (2017), the Supreme Court of the United States held that the disparagement provision of15 U.S.C §1052(a)violates the Free Speech Clause of the First Amendment. Accordingly, that a mark may “disparage . . . or bring . . . into contempt, or disrepute” is no longer a valid ground on which to refuse registration or cancel a registration.

1203.01 Immoral or Scandalous Matter

Section 2(a) of the Trademark Act,15 U.S.C. §1052(a),  is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter.See In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 673 n.6 (C.C.P.A. 1981) , aff’g206 USPQ 753 (TTAB 1979) (“Because of our holding, infra, that appellant’s mark is ‘scandalous,’ it is unnecessary to consider whether appellant’s mark is ‘immoral.’ We note the dearth of reported trademark decisions in which the term ‘immoral’ has been directly applied.”)

The prohibition against the registration of marks that consist of or comprise immoral or scandalous matter was originally enacted as §5(a) of the Trademark Act of 1905, and was reenacted as part of §2(a) of the Act of 1946. There is little legislative history concerning the intent of Congress with regard to the provision; therefore, the term “scandalous” is interpreted by looking to "its ordinary and common meaning."In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938) . The Court has noted, however, that the word “comprises” meant “includes” at the time of the statute’s enactment in 1905, and thus Congress extended the prohibition not only to marks that consist of scandalous matter, but also to marks that include scandalous matter.In re Fox, 702 F.3d 633, 638, 105 USPQ2d 1247, 1250 (Fed. Cir. 2012) (holding scandalous a mark for rooster-shaped chocolate lollipops where, in the context of the goods, “a substantial composite of the general public perceives” a scandalous meaning, even though the mark had a non-scandalous meaning in relation to the goods as well). Moreover, there is no requirement in §2(a) that a mark’s vulgar meaning be the only relevant meaning, or even the most relevant meaning.Id. Thus, an examining attorney need only prove the existence of one vulgar meaning to justify a §2(a) refusal.Id. This may be established by referring to court decisions, decisions of the Trademark Trial and Appeal Board and dictionary definitions.McGinley, 660 F.2d at 485, 211 USPQ at 673.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as,inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.McGinley, 660 F.2d at 486, 211 USPQ at 673 (holding scandalous a mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services”). The statutory language “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.”In re Runsdorf,171 USPQ 443, 444 (TTAB 1971).

The meaning imparted by a mark must be determined in the context of the current attitudes of the day.See In re Mavety Media Grp. Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) (finding the evidence insufficient to establish that BLACK TAIL, used on adult entertainment magazines, comprises scandalous matter; noting that there were both vulgar and non-vulgar definitions of “tail,” and that the record was devoid of evidence demonstrating which of these definitions a substantial composite of the general public would choose in the context of the relevant marketplace);In re Michalko, 110 USPQ2d 1949, 1953 (TTAB 2014) (finding the evidence sufficient to establish that ASSHOLE remains vulgar and offensive under modern standards of usage);In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) (holding not scandalous OLD GLORY CONDOM CORP and design comprising the representation of a condom decorated with stars and stripes in a manner to suggest the American flag); In re Thomas Labs., Inc., 189 USPQ 50, 52 (TTAB 1975) (“[I]t is imperative that fullest consideration be given to the moral values and conduct which contemporary society has deemed to be appropriate and acceptable.”)

The determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a “substantial composite of the general public.” As long as a substantial composite of the general public would perceive the mark, in context, to have a vulgar meaning, “the mark as a whole ‘consists of orcomprises . . . scandalous matter’” under §2(a).In re Fox, 702 F.3d at 638, 105 USPQ2d at 1250 (quoting15 U.S.C. §1052(a)  (emphasis added);In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003);McGinley, 660 F.2d at 485, 211 USPQ at 673 (“[T]he Lanham Act does not require, under the rubric of ‘scandalous,’ any inquiry into the specific goods or services not shown in the application itself.”);In re Star Belly Stitcher, Inc., 107 USPQ2d 2059 (TTAB 2013) (finding the evidence sufficient to establish prima facie that the term “aw shit” is scandalous or vulgar to the conscience of a substantial composite of the general public);In re Luxuria s.r.o., 100 USPQ2d 1146 (TTAB 2011) (finding a mark consisting of a bottle in the shape of a hand with middle finger extended upwards comprised matter that would be considered vulgar by a substantial composite of the general public); In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (holding scandalous a mark for restaurant and bar services consisting of words DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia, as it would be considered offensive by a substantial portion of the public);Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988) (holding scandalous a graphic design of a dog defecating, as applied to polo shirts and T-shirts, given the broad potential audience that may view applicant’s mark in sales establishments and “virtually all public places”);In re Hepperle, 175 USPQ 512 (TTAB 1972) (holding ACAPULCO GOLD not scandalous when used as a mark for suntan lotion even though the words might be a reference to marijuana).

Therefore, to support a refusal on the ground that a proposed mark is immoral or scandalous, the examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace.Mavety Media, 33 F.3d at 1371-72, 31 USPQ2d at 1925-26. This evidence could include dictionary definitions, newspaper articles, and magazine articles. The examining attorney should not rely solely on an earlier decision holding a term to be scandalous in support of a refusal. The Trademark Trial and Appeal Board has held that an earlier decision is insufficient to warrant the same finding in a future case.In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) (rejecting examining attorney’s argument that the Board’s 1981 decision inIn re Tinseltown, Inc.,212 USPQ863 (TTAB 1981) finding BULLSHIT to be scandalous is sufficient to warrant the same finding in a later case). Rather, the facts underlying the earlier decision must be looked at to determine, first, whether it has any relevance to the present case, and, if so, whether that earlier finding is equally applicable today, for example, by looking at other evidence such as recent dictionary definitions.Red Bull, 78 USPQ2d at 1381.

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word.Boulevard Entm't, 334 F.3d at 1341, 67 USPQ2d at 1478 (holding 1-800-JACK-OFF and JACK OFF scandalous, where all dictionary definitions of “jack-off” were considered vulgar);In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1314 (TTAB 2014) (finding dictionary definitions alone sufficient to make prima facie showing that mark MOMSBANGTEENS comprises vulgar matter);In re Star Belly Stitcher, 107 USPQ2d 2059 at 2062 (stating that dictionary evidence showed that the terms “shit” and “aw shit” are vulgar terms);Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (sustaining an opposition and finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term “ROD” as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation);Red Bull, 78 USPQ2d at 1381-82 (finding multiple dictionary definitions indicating BULLSHIT is “obscene,” “vulgar,” “usually vulgar,” “vulgar slang,” or “rude slang” constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).

“Whether applicant intended the mark to be humorous, or even whether some people would actually find it to be humorous, is immaterial.”In re Luxuria, s.r.o., 100 USPQ2d at 1149 (quotingBoston Red Sox Baseball Club, 88 USPQ2d at 1588). A refusal is proper if the evidence shows that “the term would be perceived and understood as vulgar by a substantial portion of the purchasing public.”Id.;see also Fox, 702 F.3d at 634, 105 USPQ2d at 1248 (“a mark that creates a double entendre falls within the proscription of §1052(a) where, as here, one of its meanings is clearly vulgar”);In re Star Belly Stitcher, 107 USPQ2d at 2063 (“[T]here is no requirement in Section 2(a) that a mark’s vulgar meaning must be the only relevant meaning, or even the most relevant meaning.”).

It has been noted that the threshold is lower for what can be described as “scandalous” than for “obscene.” Refusal to register immoral or scandalous matter has been found not to abridge First Amendment rights, because no conduct is proscribed and no tangible form of expression is suppressed. Also, the term “scandalous” has been held sufficiently precise to satisfy due process requirements under the Fifth Amendment.McGinley, 660 F.2d at 484-85, 211 USPQ at 672.

The prohibition in §2(a) of the Act against the registration of scandalous matter pertains only tomarks that are scandalous. The authority of the Act does not extend to goods that may be scandalous.See In re Madsen, 180 USPQ 334, 335 (TTAB 1973) (holding WEEK-END SEX for magazines not scandalous and observing that whether the magazine contents may be pornographic was not an issue before the Board).

The examining attorney may look to the specimen(s) or other aspects of the record for confirmation that a substantial composite of the general public would perceive the mark to be vulgar in the context of the goods or services at issue.See McGinley, 660 F.2d at 482 n.3, 211 USPQ at 670 n.3 (referring to excerpts from appellant’s newsletters pertaining to the sexual connotation of the subject matter).

To ensure consistency in examination with respect to immoral or scandalous matter, when an examining attorney believes, for whatever reason, that a mark may be considered to comprise such matter, the examining attorney must consult with his or her supervisor.

1203.02 Deceptive Matter

Section 2(a) of the Trademark Act,15 U.S.C. §1052(a),  is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter.See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ; In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).

1203.02(a) Types of Deceptive Marks

A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements (see In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013) ; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use (seeAm. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ); (4) the phonetic equivalent of a deceptive term (see In re Organik Technologies, Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ;Tanners' Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979); or (5) the foreign equivalent of any of the above (see, e.g.,Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Although there is no published Board or Federal Circuit decision regarding whether a mark consisting solely of a design can be deceptive, if there is evidence to support such a refusal, it should be issued.

Deceptive marks may include marks that falsely describe the material content of a product (see In re Intex Plastics Corp., 215 USPQ 1045, 1048 (TTAB 1982) ) and marks that are geographically deceptive (see Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1076 (TTAB 1988) ; In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984)). SeeTMEP §§1210.05-1210.06(b) regarding geographically deceptive marks.

However, marks containing a term identifying a material, ingredient, or feature should not be refused registration under §2(a) if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient. For example, the mark COPY CALF was found not deceptive for wallets and billfolds of synthetic and plastic material made to simulate leather, because it was an obvious play on the expression "copy cat" and suggested to purchasers that the goods were imitations of items made of calf skin.SeeA. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962) . Note, however, the difference with such marks as TEXHYDE and SOFTHIDE, which were held deceptive as applied to synthetic fabric and imitation leather material, respectively.SeeIntex Plastics, 215 USPQ at 1048;Tanners' Council of Am., 204 USPQ at 154-55.

In addition, formatives and other grammatical variations of a term may not necessarily be deceptive in relation to the relevant goods. For example, “silky” is defined,inter alia, as “resembling silk.”See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Thus, a mark containing the term SILKY would not be considered deceptive (but might be unregistrable under §2(e)(1)). Dictionary definitions of such terms should be carefully reviewed to determine the significance the term would have to prospective purchasers. For example, although the term GOLD would be considered deceptive for jewelry not made of gold, the term GOLDEN would not be deceptive.

1203.02(b) Elements of a §2(a) Deceptiveness Refusal

The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:

  • (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
  • (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
  • (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009);In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).

1203.02(c) Distinction between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1))

If the first two inquiries set forth by the Federal Circuit inIn re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods/services and whether prospective purchasers are likely to believe the misdescription) are answered affirmatively, the mark is deceptively misdescriptive of the goods/services under §2(e)(1). SeeTMEP §1209.04 regarding deceptively misdescriptive marks.

The third inquiry, whether the misdescription is likely to affect the decision to purchase, distinguishes marks that are deceptive under §2(a) from marks that are deceptively misdescriptive under §2(e)(1). To be deceptively misdescriptive under §2(e)(1), the misdescription must concern a feature that would be relevant to the decision to purchase the goods or use the services.SeeIn re Hinton, 116 USPQ2d 1051, 1055 (TTAB 2015) ;In re Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006) (“[T]he misdescription must concern a feature that would be relevant to a purchasing decision.”).If the misdescription is more than simply a relevant factor that may be considered in purchasing decisions, but is a material factor, the mark would be deceptive under §2(a) of the Trademark Act,15 U.S.C.  §1052(a).SeeIn re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) ;In re Shniberg, 79 USPQ2d at 1313-14. SeeTMEP §1209.04 regarding establishing deceptive misdescriptiveness andTMEP §1203.02(d) regarding determining materiality.

If it is difficult to determine whether misdescriptive matter would materially affect a decision to purchase, the examining attorney should refuse registration under both §§2(a) and 2(e)(1).See, e.g., Gold Seal Co. v. Weeks, 129 F. Supp. 928, 105 USPQ 407 (D.D.C. 1955) , aff’d sub nom. S. C. Johnson & Son, Inc. v. Gold Seal Co., 230 F.2d 832, 108 USPQ 400 (D.C. Cir. 1956) (per curiam), cert. denied, 352 U.S. 829, 111 USPQ 467 (1956),superseded by statute on other grounds as stated in AktieselskabetAF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527, 1532 (D.C. Cir. 2008). See alsoR. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964) , and Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988) , in which third parties filed oppositions based on both statutory sections. SeeTMEP §1203.02(e) regarding procedures for issuing deceptiveness refusals under §2(a).

Marks that are deceptive under §2(a) are unregistrable on either the Principal Register or the Supplemental Register, whereas marks that are deceptively misdescriptive under §2(e)(1) may be registrable on the Principal Register with a showing of acquired distinctiveness under §2(f),15 U.S.C. §1052(f),  or on the Supplemental Register, if appropriate.

SeeTMEP §1210.05(d) regarding the distinction between marks comprising deceptive matter under §2(a) and matter that is primarily geographically deceptively misdescriptive under §2(e)(3).

1203.02(d) Determining Materiality

To establish a prima facie case of deceptiveness, the examining attorney must provide sufficient evidence that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a significant portion of the relevant consumers. To do so, the examining attorney must provide evidence that the misdescriptive quality or characteristic would make the product or service more appealing or desirable to prospective purchasers.In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citingIn re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992) ). A product or service is usually more desirable because of objective standards or criteria that provide an objective inducement to purchase the goods and/or services beyond that of mere personal preference.

1203.02(d)(i) Objective Criteria

In assessing whether a misdescription would affect the decision to purchase, the following are examples (not a comprehensive list) of the type of objective criteria that should be used to analyze whether a term is a material factor. The evidence may often point to more than one characteristic, thereby strengthening the examining attorney’s prima facie case. For example, the evidence may show that goods deemed “organic” because they are produced in compliance with objective criteria can also be more costly, provide health benefits, and satisfy a social policy of reducing the impact on the environment by utilizing chemical-free growing practices. The evidence also must suffice to indicate that the misdescriptive quality or characteristic would affect the purchasing decision of a significant portion of the relevant consumers.In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009). Generally, evidence of the objective inducement to purchase supports a presumption that a significant portion of the relevant consumers would likely be deceived.

Superior Quality - The evidence must support a finding that goods or services that contain or feature the misdescriptive term are superior in quality to similar goods and/or services that do not. For example, silk can be shown to be a more luxurious and expensive material because of the difficulty in making silk, its unique feel, and its breathability. Similarly, cedar wood can be shown to have superior durability and resistance to decay.

Enhanced Performance or Function - The evidence must support a finding that goods possessing the characteristic or feature at issue are superior to those that do not. For example, certain wood species are naturally resistant to termite attack or may be more durable than others. There might also be evidence of an increasing interest in reducing the potential leaching of chemicals from treated wood into the environment.

Difference in Price - Evidence of a price differential between items that do and those that do not possess the feature or characteristic described by the misdescriptive term may be enough to support a §2(a) refusal, depending upon the nature of the goods or services. It is also important to remember that because a difference in price is relative to the goods and/or services in a particular industry, a particular term may be deceptive for goods and services that are not typically thought of as luxury items.

Health Benefit - The evidence must establish a belief that the feature or characteristic provides a health benefit.

Religious Practice or Social Policy - The evidence must show that the religious practice or social policy has definable recognized criteria for compliance in order to support a finding of deceptiveness when the criteria are not adhered to by the applicant. For example, a body of Jewish law deals with what foods can and cannot be eaten and how those foods must be prepared and eaten. The term “kosher" refers to food prepared in accordance with these standards as well as to the selling or serving of such food.See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Another example is the term “vegan,” which is defined as someone who eats plant products only and who uses no products derived from animals, such as fur or leather.Id.

The evidence necessary to establish deceptiveness can come from the same sources used to show that the term is misdescriptive. Internet searches that combine the deceptive term with terms such as “desirable,” “superior,” “premium,” “better quality,” “sought after,” “more expensive,” or “established standards” may be useful in seeking evidence to support the second and third prongs of the test.

Applicant’s own advertising - in the form of specimens, brochures, web pages, press releases, or product and service information sheets - may provide the best evidence of deceptiveness. Moreover, the examining attorney should make of record any instances where the applicant attempts to benefit from the potentially deceptive term and where the advertising includes false assertions related to the deceptive wording. Although not a requirement for a deceptive refusal, proof of an actual intent to deceive may be considered strong evidence of deceptiveness.

1203.02(d)(ii) Mere Personal Preference

The types of objective criteria discussed above can be contrasted with mere personal preferences for which the requisite evidentiary support generally cannot be found to establish materiality. For example, SPEARMINT for gum, LAVENDER for dish soap, and BLUE for bicycles refer to flavor, scent, and color features that, in those contexts, most likely reflect mere personal preferences which would not be considered material for purposes of a deceptiveness refusal.

Similarly, personal preferences regarding types of cuisine served at restaurants (e.g., SEAFOOD or PIZZA) generally do not establish materiality absent evidence that the type of cuisine meets some objective criteria more in line with those listed above, such as for VEGAN or KOSHER.

Whether the requisite evidentiary support can be found to establish that the use of such terms in connection with goods/services that do not contain or feature the characteristic is deceptively misdescriptive under §2(e)(1) must be determined on a case-by-case basis.

1203.02(e) Procedures for Issuing §2(a) Deceptive Refusals
1203.02(e)(i) When the Mark is Clearly Misdescriptive

If there is evidence in the record clearly indicating that the mark or a term(s) in the mark is misdescriptive (e.g., the specimen or language in the identification indicates that the goods/services do not have the relevant feature or characteristic), the examining attorney must determine whether the misdescription is believable and material and do the following:

  • If the misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, approve the mark for publication. Otherwise, issue an Office action containing all other relevant refusals and/or requirements.
  • If the misdescription would be believable, but would not be material, issue a refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate, i.e., if the term at issue is not part of a unitary expression), with supporting evidence, and all other relevant refusals and/or requirements.
  • If the misdescription would be believable and material, issue a deceptiveness refusal under §2(a) with supporting evidence, an alternative refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), and all other relevant refusals and/or requirements.
1203.02(e)(ii) When It is Not Clear Whether the Mark is Misdescriptive

When a mark comprises or contains descriptive wording, but it is not clear whether the goods/services possess the relevant feature or characteristic, the examining attorney must first determine whether such feature or characteristic would be believable and material to the decision to purchase.

If the potential misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, the examining attorney should approve the mark for publication. Otherwise, the examining attorney should issue an Office action containing all other relevant refusals and/or requirements.

If the goods possess the relevant feature or characteristic and the feature or characteristic referenced by the mark would be believable and material, the identification must include the feature or characteristic in order to resolve the ambiguity between the mark and the identification of goods/services. The identification must be amended even if the record indicates elsewhere that the goods/services contain the feature or characteristic. Therefore, if the application could otherwise be put in condition for approval for publication by an examiner’s amendment (seeTMEP §707), to expedite prosecution, the examining attorney should:

  • Attempt to contact the applicant to obtain authorization for a disclaimer, if appropriate (i.e., if the term at issue is not part of a unitary expression), and an amendment to the identification to include the feature or characteristic (if believable and material), and for any other amendments that would put the application in condition for approval for publication.
  • If the applicant states that the goods/services do not possess the feature or characteristic, the examining attorney must so indicate in a Note to the File entered in the record, and must then issue a refusal under §2(e)(1) as deceptively misdescriptive (if believable but not material), or disclaimer requirement if appropriate, or a refusal under §2(a) as deceptive (if believable and material) and an alternative refusal under §2(e)(1), or disclaimer requirement if appropriate, as deceptively misdescriptive, and make all other relevant requirements.
  • To ensure the completeness of the record in the event of an appeal, any Office action issued must also include an information request under37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic.

If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must:

  • Issue a refusal under §2(e)(1) as descriptive (or a requirement for a disclaimer, if appropriate, i.e., if the term at issue is not part of a unitary expression), based on the presumption that the goods/services possess the feature or characteristic; and
  • Issue a requirement that the applicant amend the identification to include the feature or characteristic (if believable and material); and
  • Issue an information request under37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic; and
  • Issue any other relevant refusals and/or requirements.

If the applicant responds that the goods/services possess the feature or characteristic or amends the identification to include the feature or characteristic, the examining attorney must issue a final Office action, assuming that the application is otherwise in condition for final action, as to the descriptiveness refusal (or disclaimer requirement, if not provided), identification requirement (if applicable and not amended), and any other relevant refusals and/or requirements, as appropriate.

If the applicant responds that the goods/services do not possess the feature or characteristic, the examining attorney must withdraw the §2(e)(1) descriptiveness refusal (or disclaimer requirement), as well as the identification requirement (if applicable), and issue a subsequent nonfinal Office action dependent on whether the misdescription would be believable and material:

  • If the misdescription would be believable but not material, the examining attorney must issue a refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), with supporting evidence, and maintain all other relevant refusals and/or requirements.
  • If the misdescription would be believable and material, the examining attorney must issue a deceptiveness refusal under §2(a) with supporting evidence, an alternative refusal under §2(e)(1) as deceptively misdescriptive (or disclaimer requirement if appropriate), and maintain all other relevant refusals and/or requirements.

If the applicant does not respond to the information request and does not amend the identification to include the feature or characteristic, the examining attorney must:

  • Issue a subsequent nonfinal Office action maintaining the descriptiveness refusal (or disclaimer requirement, if not provided), based on the presumption that the goods/services possess the feature or characteristic, as well as the identification requirement (if applicable), information request, and any other relevant refusals and/or requirements raised in the initial Office action, as appropriate; and
  • If the misdescription would be believable and material, issue an alternative refusal under §2(a) as deceptive, based on the presumption that the goods/services do not possess the relevant feature or characteristic, and supported by evidence; and
  • Issue an alternative refusal under §2(e)(1) as deceptively misdescriptive, or disclaimer requirement if appropriate, based on the presumption that the goods/services do not possess the relevant feature or characteristic.

See, e.g.,In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive, deceptively misdescriptive, or, alternatively, merely descriptive for wine, after the applicant failed to fully respond to the examining attorney’s inquiries regarding the origin and certification of applicant’s goods);In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive or, in the alternative, primarily geographically deceptively misdescriptive for cheese; the applicant failed to respond to a37 C.F.R. §2.61(b) information request as to the origin of the goods).

1203.02(f) Responding to a §2(a) Deceptiveness Refusal
1203.02(f)(i) Amending the Identification of Goods or Services

Generally, an applicant may avoid or overcome a deceptiveness refusal by amending the identification of goods or services, if accurate, to include the potentially deceptive term. For deceptiveness refusals based on the material composition of the goods, if the applicant amends the identification to include the potentially deceptive term, the USPTO will rely on the presumption that the goods contain a sufficient amount of the material to obviate deceptiveness; there is no requirement to substantiate the amount or percentage of the material or feature in the goods. Thus, the applicant may amend “ties” to “silk ties,” “milk and cheese” to “organic milk and cheese,” and “jewelry” to “gold jewelry” or to “jewelry made in whole or significant part of gold.”

The Office construes the wording "made in significant part of" as indicating that the goods contain a sufficient amount of the named ingredient/material composition to meet the standard for use of the term in the relevant industry. In the case of "coats made in significant part of leather," such wording would be construed to mean that the "coats" contain a sufficient amount of leather to be called "leather coats" in the relevant industry. However, the wording "coats made in part of leather" is not acceptable because, although the goods may contain some leather, it may not be an amount sufficient for the goods to be called “leather coats” in the relevant industry.

Note, however, that amending the identification to exclude goods made from the named ingredient or material composition will not avoid or overcome a deceptiveness refusal.

Amending an identification of services to add “featuring” or “including” a material term (e.g.,“restaurants featuring organic cuisine” and “retail furniture stores including leather furniture”) generally is sufficient to obviate deceptiveness. For example, as long as the identification indicates that the restaurant provides organic cuisine, or the furniture store sells leather furniture, there is no deception even if other types of food or furniture are also available.

1203.02(f)(ii) Other Arguments

Applicants may attempt to overcome a §2(a) refusal by providing evidence that applicant’s advertising, or other means, would make consumers aware of the misdescription. Neither evidence regarding advertising, labeling, or extent of use, nor information found on the specimens, can negate the misdescriptiveness with regard to use of the mark in relation to the goods or services. In addition, an applicant’s anecdotal or past practices and “explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided” are of little value in the deceptiveness analysis.See In re Budge Mfg. Co., 857 F.2d 773, 775-76, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988).

However, in some cases, the applicant may be able to provide credible evidence that consumers would not expect goods sold under a certain mark to actually consist of or contain the feature or characteristic named in the mark.See, e.g.,In re Robert Simmons, Inc.,192 USPQ 331 (TTAB 1976)(holding that WHITE SABLE is not deceptive on artist's paint brushes).

The argument that there is no deception because consumers will immediately discern the true nature of the goods and/or services when they encounter them is not persuasive. Deception can attach prior to seeing or encountering the goods or services, for example, based on advertising over the radio or Internet or via word of mouth.See In re ALP of S. Beach, Inc., 79 USPQ2d 1009, 1014 (TTAB 2006) .

As noted above, marks that are deceptive under §2(a) are never registrable on either the Principal Register, even under §2(f) or the Supplemental Register. However, applicants may present evidence of a similar nature to what is often submitted for acquired distinctiveness, such as declarations regarding how the mark is perceived by consumers, as rebuttal evidence to the prima facie case, in an effort to overcome one or all of the prongs of the §2(a) test.See In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235, 1238 (TTAB 1989) . Note that merely relying on the length of use, without providing other information or evidence, would never be sufficient to overcome a §2(a) refusal. Moreover, priority of use cannot overcome a deceptiveness refusal.In re AOP LLC, 107 USPQ2d 1644, 1650 n.6 (TTAB 2013) .

The fact that only those knowledgeable in the relevant trade, and not average purchasers, would be deceived does not preclude a finding that a mark comprises deceptive matter.In re House of Windsor, Inc., 223 USPQ 191, 192 (TTAB 1984) .

1203.02(g) Deceptive Matter: Case References

In the following cases, proposed marks were determined to be deceptive, under §2(a):In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988),aff’g8 USPQ2d 1790 (TTAB 1987) (holding LOVEE LAMB deceptive for seat covers not made of lambskin);In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive for wine, where the term is used by members of the European Union to designate a particular quality and geographical origin of wine, when applicant is not the entity that administers the designation and the goods do not necessarily originate in Europe);In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) (holding the term WHITE in the proposed mark WHITE JASMINE deceptive for tea that did not include white tea, where the evidence established that consumers perceive that white tea has desirable health benefits);In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (holding a mark consisting of the alpha symbol and letters “CU” deceptive for dietary supplements not containing copper, a common ingredient in dietary supplements, which evidence showed is referred to as CU);In re ALP of S. Beach Inc., 79 USPQ2d 1009 (TTAB 2006) (CAFETERIA (stylized) held deceptive as used in connection with “restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants”);In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (holding SUPER SILK deceptive for “clothing, namely dress shirts and sport shirts made of silk-like fabric”);In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment, notwithstanding applicant’s assertions that the goods are manufactured by a process that avoids the use of chemical bleaches, because the identification of goods was broad enough to include textiles and clothing manufactured with chemical processes or dyes);In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (holding LONDON LONDON deceptive for clothing having no connection with London);In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (holding PERRY NEW YORK and design of New York City skyline deceptive for clothing originating in North Carolina, in view of the renown of New York City in the apparel industry); Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (holding GOLDENER TROPFEN deceptive for wines, in view of evidence of the international renown of the Goldtropfchen vineyard of West Germany, finding that the purchasing public would be likely to think, mistakenly, that applicant’s wines were produced from grapes grown there in accordance with German wine laws and regulations); Bureau Nat’l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610, 1616 (TTAB 1988) (holding COLAGNAC deceptive for cola-flavored liqueur containing Spanish brandy, concluding that purchasers were likely to believe that applicant’s goods contained COGNAC brandy); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive as applied to clothing not made of silk); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983),recon. denied,223 USPQ 191 (TTAB 1984) (holding BAHIA deceptive as applied to cigars having no connection with the Bahia province of Brazil, the record indicating that tobacco and cigars are important products in the Bahia region); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) (holding CEDAR RIDGE deceptive for embossed hardboard siding not made of cedar); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) (holding TEXHYDE deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, and the like);Tanners’ Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (holding SOFTHIDE deceptive for imitation leather material); In re Salem China Co., 157 USPQ 600 (TTAB 1968) (holding AMERICAN LIMOGES, used on dinnerware that was neither made in Limoges, France, nor made from Limoges clay, deceptive because of the association of Limoges with fine quality china); Co. of Cutlers of Hallamshire in the Cnty. of York v. Regent-Sheffield, Ltd., 155 USPQ 597 (TTAB 1967) (holding SHEFFIELD, used on cutlery not made in Sheffield, England, deceptive because of the renowned status of Sheffield in relation to cutlery); In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963) (holding IVORY WOOD, for lumber and timber products, deceptive since the goods were not made of ivorywood nor did they contain an ivorywood pattern).

Marks were found not to be deceptive in the following cases:In re Tapco Int’l Corp., 122 USPQ2d 1369 (TTAB 2017) (holding KLEER MOULDINGS and KLEER TRIMBOARD not deceptive, because there was no evidence as to the likely consumer perception of the term “clear” (or KLEER) when used in connection with the identified PVC building products and thus the record did not establish that the term misdescribes the goods);Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (holding PARK AVENUE neither deceptive nor geographically deceptively misdescriptive as applied to applicant’s cigarettes and smoking tobacco, finding no goods/place association between Park Avenue in New York City, on which opposer’s world headquarters was located, and tobacco products); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (holding WOOLRICH for clothing not made of wool not to be deceptive under §2(a));In re Fortune Star Prods. Corp., 217 USPQ 277 (TTAB 1982) (holding NIPPON, for radios, televisions, and the like, not deceptive in relation to the goods because, although the applicant was an American firm, the goods were actually made in Japan);In re Sweden Freezer Mfg. Co., 159 USPQ 246 (TTAB 1968) (holding SWEDEN and design, for which registration was sought under §2(f) for external artificial kidney units, not deceptive, finding the case to be in the category “where a geographical trademark may involve a degree of untruth but the deception may be perfectly innocent, harmless or negligible”); A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962) (holding COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, not deceptive, noting that the mark, as an obvious play on the expression “copy cat,” suggested to purchasers that the goods were imitations of items made of calf skin).

1203.03 Matter That May Falsely Suggest a Connection

Section 2(a) of the Trademark Act,15 U.S.C. §1052(a), bars the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, falsely suggests a connection with them.

Section 2(a) is distinctly different from §2(d),15 U.S.C. §1052(d),  for which the relevant test is likelihood of confusion. In Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-76, 217 USPQ 505, 508-09 (Fed. Cir. 1983),aff’g213 USPQ 594 (TTAB 1982), the Court of Appeals for the Federal Circuit noted as follows:

A reading of the legislative history with respect to what became §2(a) shows that the drafters were concerned with protecting the name of an individual or institution which was not a technical “trademark” or “trade name” upon which an objection could be made under §2(d) . . . .

Although not articulated as such, it appears that the drafters sought by §2(a) to embrace concepts of the right to privacy, an area of the law then in an embryonic state (footnote omitted). Our review of case law discloses that the elements of a claim of invasion of one’s privacy have emerged as distinctly different from those of trademark or trade name infringement. There may be no likelihood of such confusion as to the source of goods even under a theory of “sponsorship” or “endorsement,” and, nevertheless, one’s right of privacy, or the related right of publicity, may be violated.

The right to privacy protects a party’s control over the use of its identity or “persona.” A party acquires a protectible interest in a name or equivalent designation under §2(a) where the name or designation is unmistakably associated with, and points uniquely to, that party’s personality or “persona.” A party’s interest in a name or designation does not depend upon adoption and use as a technical trademark or trade name.Univ. of Notre Dame du Lac, 703 F.2d at 1375-77, 217 USPQ at 508-09; Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). Section 2(a) protection is intended to prevent the unauthorized use of the persona of a person or institution and not to protect the public.In re MC MC S.r.l., 88 USPQ2d 1378, 1380 (TTAB 2008) (quotingBridgestone/Firestone Research Inc. v. Auto. Club De L’Ouest De La France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed. Cir. 2001)).

Moreover, a mark does not have to comprise a person’s full or correct name to be unregistrable; a nickname or other designation by which a person is known by the public may be unregistrable under this provision of the Act.Buffett, 226 USPQ at 430 (finding evidence of record “sufficient to raise a genuine issue of material fact as to whether the term ‘MARGARITAVILLE’ is so uniquely and unmistakably associated with opposer as to constitute opposer’s name or identity such that when applicant’s mark is used in connection with its [restaurant] services, a connection with opposer would be assumed”).

SeeTMEP §§1203.03(c)–1203.03(c)(iii) regarding false suggestion of a connection.

See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983), concerning the various forms of identity which have been protected under the rights of privacy and publicity.

1203.03(a) Definitions
1203.03(a)(i) “Persons”

Section 2(a) of the Trademark Act,15 U.S.C. §1052(a),  protects, inter alia, “persons, living or dead.”

Section 45 of the Act,15 U.S.C. §1127,  defines “person” and “juristic person” as follows:

The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

The term “persons” in §2(a) refers to real persons, not fictitious characters. It also encompasses groups of persons.SeeMatal v. Tam, 582 U.S. ___ (2017). With respect to natural persons, they may be living or dead. However, §2(a) may not be applicable with regard to a deceased person when there is no longer anyone entitled to assert a proprietary right or right of privacy.Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with the deceased artist Leonardo Da Vinci);In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008 (holding MARIA CALLAS did not falsely suggest a connection with deceased opera singer Maria Callas).SeeTMEP §1203.03(c)(i) regarding elements of a §2(a) false suggestion of a connection refusal.

In the case of a mark comprising the name of a deceased natural person, the “right to the use of a designation which points uniquely to his or her persona may not be protected under Section 2(a) after his or her death unless heirs or other successors are entitled to assert that right…. In order to possess rights, such person, or someone to whom those rights have been transferred, must exist.”In re MC MC S.r.l., 88 USPQ2d at 1380 (quotingIn re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (overruled on other grounds by In re WNBA Enter., LLC, 70 USPQ2d 1153 (TTAB 2003));seeIn re Jackson Int'l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417, 1421 (TTAB 2012) . A key consideration is “whether or not there is someone (this may be a natural person, estate, or juristic entity) with rights in the name.”Id. Any doubt regarding the existence of heirs or successors with such rights must be resolved in favor of the applicant.In re MC MC S.r.l., 88 USPQ2d at 1381.

In addition to natural persons, §2(a) includes juristic persons, that is, legally created entities such as firms, corporations, unions, associations, or any other organizations capable of suing and being sued in a court of law.SeeMorehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969);Popular Merch. Co. v. “21” Club, Inc., 343 F.2d 1011, 145 USPQ 203 (C.C.P.A. 1965);John Walker & Sons, Ltd. v. Am. Tobacco Co., 110 USPQ 249 (Comm’r Pats. 1956);Copacabana, Inc. v. Breslauer, 101 USPQ 467 (Comm’r Pats. 1954). Juristic persons do not have to be well known to be protected from the registration of a mark that falsely suggests a connection with them.See generally Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960) (noting that §2(a) protection is not limited to large, well known, or nationally recognized institutions).

A juristic person’s rights under §2(a) are extinguished when the juristic person ceases to exist.In re Wielinski, 49 USPQ2d at 1758 (overruled on other grounds, In re WNBA Enter., LLC, 70 USPQ2d 1153 (TTAB 2003)).

Section 45 of the Act,15 U.S.C. §1127,  also defines “person” to include the United States and its agencies and instrumentalities, as well as any state:

The term “person” also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.

The term “person” also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any non-governmental entity.

It is well settled that the United States government is a "person" within the meaning of §2(a).15 U.S.C.  §1127;FBI v. Societe: “M.Bril & Co.”, 172 USPQ 310, 313 (TTAB 1971). Therefore, the common names of, and acronyms for, United States government agencies and instrumentalities are considered persons.SeeIn re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506-08 (TTAB 2009) (stating the statutory definition of “person” includes the United States and any agency or instrumentality thereof and concluding that “[t]he only entity the name ‘U.S. Customs Service’ could possibly identify is the government agency” formerly known as the United States Customs Service and now known as United States Customs and Border Protection);NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975) (finding the National Aeronautics and Space Administration (NASA) is a juristic person);FBI, 172 USPQ at 313 (noting the Federal Bureau of Investigation (FBI) is a juristic person).

1203.03(a)(ii) “Institutions”

The term “institution” has been broadly construed.SeeIn re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1219 (Fed. Cir. 2009) (“[T]he ordinary meaning of ‘institution’ suggests the term is broad enough to include a self-governing Indian nation,” quotingBlack's Law Dictionary 813, 1133 (8th ed. 2004), which defines “institution” as “[a]n established organization,” and defines “organization” as a “body of persons . . . formed for a common purpose”);In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) (“each federally recognized Apache tribe is necessarily either a juristic person or an institution”);In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) (“[T]he entire organization which comprises the Olympic Games, as a whole, qualifies as an ‘institution’ within the meaning of Section 2(a) of the Trademark Act.

In addition to qualifying as a person, United States government agencies and instrumentalities, as identified by their common names and acronyms therefor, also may be considered institutions within the meaning of §2(a).SeeIn re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 (TTAB 2009) (“Institutions, as used in Section 2(a), include government agencies.”);In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (finding the United States Military Academy is an institution and West Point or Westpoint “has come to be solely associated with and points uniquely to the United States Military Academy”). The common names of, and acronyms and terms for, United States government programs may also be considered institutions, depending on the evidence of record.SeeIn re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285-86 (TTAB 1997) (finding that the “NAFTA is an institution, in the same way that the United Nations is an institution,” and noting that the “legislative history . . . indicates that the reference to an ‘institution’ in Section 2(a) was designed to have an expansive scope.”);NASA v. Record Chem. Co., 185 USPQ 563, 565 (TTAB 1975) (finding NASA’s Apollo space program is an institution).

Institutions do not have to be large, well known, or “national” to be protected from the registration of a mark that falsely suggests a connection with them.Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960).

While the §2(a) prohibition against the registration of matter that may falsely suggest a connection with institutions may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules.SeeTMEP §1205.01 andAppendix C (setting forth a nonexhaustive list of United States statutes protecting designations of certain government agencies and instrumentalities).

1203.03(a)(iii) “National Symbols”

A “national symbol” is subject matter of unique and special significance that, because of its meaning, appearance, and/or sound, immediately suggests or refers to the country for which it stands.In re Consol. Foods Corp., 187 USPQ 63, 64 (TTAB 1975) (noting national symbols include the bald eagle, Statue of Liberty, designation “Uncle Sam” and the unique human representation thereof, the heraldry and shield designs used in governmental offices, and certain uses of the letters “U.S.”). National symbols include the symbols of foreign countries as well as those of the United States.In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304, 305 (TTAB 1969) .

“National symbols” cannot be equated with the “insignia” of nations, which are prohibited from registration under §2(b). As noted inLiberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960):

The Act . . . does not put national symbols on a par with the flag, coat of arms, or other insignia of the United States, which may not in any event be made the subject matter of a trade or service mark. With regard to national symbols the statute provides merely that they shall not be . . . be used as falsely to suggest a connection between the holder of the mark and the symbol.

SeeTMEP §1204 regarding insignia.

Trademark Act Section 2(a) does not prohibit registration of marks comprising national symbols; it only prohibits registration of matter that may falsely suggest a connection with them.Liberty Mut. Ins. Co. , 185 F. Supp. at 908, 127 USPQ at 323 (finding marks comprising portion of the Statue of Liberty not to falsely suggest a connection with the Statue of Liberty or the United States government, the Court “[a]ssuming without deciding” that the statue is a national symbol).

Designations have been held to be national symbols within the meaning of §2(a) in the following cases:In re Anti-Communist World Freedom Cong., 161 USPQ 304 (holding a representation of a hammer and sickle to be a national symbol of the Union of Soviet Socialist Republics (U.S.S.R.)); In re Nat'l Collection & Credit Control, Inc.,152 USPQ 200, 201 n.2 (TTAB 1966) (“The American or bald eagle with wings extended is a well-known national symbol or emblem of the United States”).

Designations have been held not to be national symbols in the following cases:In re Consol. Foods Corp., 187 USPQ 63 (TTAB 1975) (holding OSS, the acronym for the Office of Strategic Services, not to constitute a national symbol);W. H. Snyder & Sons, Inc. v. Ladd, 227 F. Supp. 185, 140 USPQ 647 (D.D.C. 1964) (holding HOUSE OF WINDSOR not to be a national symbol of England, but merely the name of its present reigning family); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671 (TTAB 1987) (holding SPACE SHUTTLE not to constitute a national symbol on the evidence of record, the Board also finding “shuttle” to be a generic term for a space vehicle or system); Jacobs v. Int'l Multifoods Corp., 211 USPQ 165, 170-71 (TTAB 1981) , aff’d on other grounds, 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982) (“[H]istorical events such as the ‘BOSTON TEA PARTY’ . . ., although undoubtedly associated with the American heritage, do not take on that unique and special significance of a ‘national symbol’ designed to be equated with and associated with a particular country.”);In re Mohawk Air Serv. Inc., 196 USPQ 851, 854 (TTAB 1977) (stating MOHAWK is not immediately suggestive of the United States and, therefore, not a national symbol);In re Gen. Mills, Inc., 169 USPQ 244 (TTAB 1971) (finding UNION JACK, which applicant was using on packages of frozen fish marked “English cut cod” and in its restaurant near representations of the British national flag, did not suggest a particular country, the Board noting that it could consider only the matter for which registration was sought).

The name of a country is not a national symbol within the meaning of §2(a) of the Trademark Act, In re Sweden Freezer Mfg. Co., 159 USPQ 246, 248-49 (TTAB 1968), nor does use of the name of a country as a mark, by itself, amount to deception or a “false connection” under §2(a).In re Fortune Star Prods. Corp., 217 USPQ 277, 277 (TTAB 1982) .

The common names of, and acronyms for, government agencies and instrumentalities are not considered to be national symbols.In re Consol. Foods, 187 USPQ at 64 (OSS, acronym for the Office of Strategic Services, held not to be a national symbol, but merely to designate a particular (and long defunct) government agency, the Board contrasting national symbols with names and acronyms of government agencies: “’National symbols’ . . . are more enduring in time, . . . and immediately conjure up the image of the country as a whole. Symbols of a country take on a special meaning and significance and are not so numerous as to dilute the special meaning and significance that each has.”)

While the prohibition of §2(a) against the registration of matter that may falsely suggest a connection with national symbols may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules.SeeTMEP §1205.01 andAppendix C.

1203.03(b) Disparagement, Bringing into Contempt, and Bringing into Disrepute

Until June 19, 2017, the USPTO examined applications pursuant to the provision in Section 2(a) of the Trademark Act,15 U.S.C §1052(a), that prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols. However, the Supreme Court held this provision of §2(a) unconstitutional under the Free Speech Clause of the First Amendment inMatal v. Tam, 582 U.S. ___ (2017). Accordingly, that a mark may “disparage . . . or bring . . . into contempt, or disrepute” is no longer a valid ground on which to refuse registration or to cancel a registration.

1203.03(c) False Suggestion of a Connection

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols. SeeTMEP §1203.03(a)(i)regarding persons, TMEP §1203.03(a)(ii) regarding institutions,TMEP §1203.03(a)(iii) regarding national symbols, andTMEP §1203.03 for information about the legislative history of §2(a).

1203.03(c)(i) Elements of a §2(a) False Suggestion of a Connection Refusal

To establish that a proposed mark falsely suggests a connection with a person or an institution, it must be shown that:

  • 1 the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
  • 2 the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
  • 3 the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
  • 4 the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

In re Pedersen, 109 USPQ 2d 1185, 1188-89 (TTAB 2013) ;In re Jackson Int'l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417, 1419 (TTAB 2012) ;In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507 (TTAB 2009) ;In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008);Ass'n Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007) ;In re White, 80 USPQ2d 1654, 1658 (TTAB 2006);In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) ;In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990) ; Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985) ;In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985) ;see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

With regard to the first element, “[a] nickname or an informal reference, even one created by the public, can qualify as an entity's ‘identity,’ thereby giving rise to a protectable interest.”Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496 (TTAB2015).In addition,the fact that a term identifies both a particular group of people and the language spoken by some of the members of the group is not evidence that it fails to identify the group.In re Pedersen, 109 USPQ 2d at 1190 (rejecting applicant’s argument that because the term LAKOTA identifies a language, it does not approximate the name or identity of a people or institution).

The requirement that the proposed mark would be recognized as pointing uniquely and unmistakably to the person or institution does not mean that the term itself must be unique. Rather, the question is whether, as used on the goods or services in question, consumers would view the mark as pointing uniquely to petitioner, or whether they would perceive it to have a different meaning.Hornby v. TJX Cos., Inc., 87 USPQ2d 1411, 1427 (TTAB 2008) (in granting the petition to cancel registration of the mark TWIGGY, Board found that, at the time of registration in 2000, the mark TWIGGY on children’s clothing would be recognized as pointing uniquely and unmistakably to petitioner, who was recognized as a famous British model, and that consumers would presume an association with petitioner). In addition, unassociated third-party use of a term does not in and of itself establish that that the term does not point uniquely or unmistakably to a particular people or institution.In re Pedersen, 109 USPQ2d at 1196 (finding consumer exposure to third-party use of LAKOTA on products and services unrelated to applicant’s insufficient to show that applicant’s use of LAKOTA does not point uniquely to the Lakota people);Hornby v. TJX Cos., 87 USPQ2d at 1427 (finding evidence of third-party registrations showing registration of the term “TWIGGY” for goods unrelated to children’s clothing to have “no probative value”).

A connection with an entity is established when the record establishes a specific endorsement, sponsorship, or the like of the particular goods and services, whether written or implied.In re White, 80 USPQ2d 1654, 1660-61 (TTAB 2006) . InIn re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350, 1353-54 (TTAB 1997) , the Trademark Trial and Appeal Board held that Ernest Hemingway’s friendship with the original owner of applicant’s bar, his frequenting the bar, and his use of the back room as an office did not establish the kind of “connection” that entitled applicant to register a mark consisting in part of a portrait of Hemingway. Rather, a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant’s services would be necessary to entitle the applicant to registration.Id.

If it is unclear whether the person or institution is connected with the goods sold or services performed by the applicant, the examining attorney must make an explicit inquiry under37 C.F.R. §2.61(b). If the examining attorney independently confirms that the person or institution is connected with the goods sold or services performed by the applicant, a Note to the File must be entered in the record to reflect that no further action is required as to the issue of false suggestion of a connection.SeeTMEP §710.02.

A refusal on this basis requires, by implication, that the person or institution with which a connection is falsely suggested must be the prior user.In re Nuclear Research, 16 USPQ2d at 1317; In re Mohawk Air Servs. Inc.,196 USPQ 851, 854-55 (TTAB 1977). However, it is not necessary that the prior user ever commercially exploit the name as a trademark or in a manner analogous to trademark use.In re Pedersen, 109 USPQ2d at 1193. A false suggestion of a connection may be found when the party’s right to control the use of its identity is violated, even if there is no juristic entity having the authority to authorize use of the mark.Id.

Intent to identify a party or trade on its goodwill is not a required element of a §2(a) claim of false suggestion of an association with such party.S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987) ;Consol. Natural Gas Co. v. CNG Fuel Sys., Ltd., 228 USPQ 752, 754 (TTAB 1985) . However, evidence of such an intent could be highly persuasive that the public would make the intended false association.Univ. of Notre Dame du Lac, 703 F.2d at 1377, 217 USPQ at 509,aff’g213 USPQ 594 (TTAB 1982).

1203.03(c)(ii) Government Agencies and Instrumentalities

Registration of matter that may falsely suggest a connection with a United States government agency or instrumentality is prohibited under §2(a).SeeTMEP §1203.03(c)(i) (setting out the four-element test). Some names, acronyms, titles, terms, and symbols of United States government agencies or instrumentalities are also protected by separate statute. SeeTMEP §1205.01 for information about statutorily protected matter andAppendix C for a nonexhaustive list of United States statutes protecting designations of certain government agencies and instrumentalities. Many of these statutes allow third parties to use the protected matter when authorized by an agency official. This authorization to use, by itself, should not be construed to extend to authorization to register marks that include matter the applicant does not own. See generallyTMEP §1201 regarding the ownership requirement. Where it appears from the record that the applicant is not the agency or instrumentality referenced in the mark, but the record suggests an affiliation between the applicant and the referenced agency, the examining attorney must require the applicant to establish its authorization to register the mark by requesting information pursuant to37 C.F.R §2.61(b).SeeTMEP §1201.06(c).

Registration must be refused if the nature of the mark and the nature of the goods or services is such that a United States government agency or instrumentality would be presumed to be the source or sponsorship of the applicant’s goods or services.In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507-08 (TTAB 2009) (finding “U.S. CUSTOMS SERVICE” is a close approximation of the former name of the government agency, United States Customs Service, which is now known as the United States Customs and Border Protection but which is still referred to as the U.S. Customs Service by the public and the agency itself, that the seal design in the proposed mark is nearly identical to the seal used by the former United Stated Customs Service, that the only meaning the “U.S. Customs Service” has is to identify the government agency, and that a connection between applicant’s attorney services and the activities performed by the United States Customs and Border Protection would be presumed);In re Nat'l Intelligence Acad., 190 USPQ 570, 572 (TTAB 1976) (stating NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, falsely suggests a connection with the United States government since intelligence gathering is a known function of a number of government agencies and “[a] normal outgrowth and development of such activities would be the training of officers in intelligence gathering”);In re Teasdale Packing Co., 137 USPQ 482 (TTAB 1963) (holding U. S. AQUA and design unregistrable under §2(a) on the ground that purchasers of applicant’s canned drinking water would be misled into assuming approval or sponsorship by the United States government in view of the nature of the mark, including a red, white, and blue shield design, and the nature of the goods, the Board noting a program for stocking emergency supplies of water in fallout shelters and the setting of standards for drinking water by United States government agencies).

The record must include evidence showing that the designation in the mark refers to the agency or instrumentality and that the goods or services are such that a connection with that agency or instrumentality would be presumed, particularly when it is not readily apparent that the wording or acronym in the mark references the agency or instrumentality.CompareIn re Mohawk Air Serv. Inc., 196 USPQ 851, 855 (TTAB 1977) (holding MOHAWK 298, for airplanes, to not falsely suggest a connection with the U.S. Army and the Army’s use of the term “Mohawk” to identify one of its airplanes, since there was no evidence of record that the Army continuously used the term since 1958, that the public was aware of such use, or that the public would associate “Mohawk” named airplanes with the U.S. Army),withIn re U.S. Bicentennial Soc’y, 197 USPQ 905, 906-07 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, to falsely suggest a connection with the American Revolution Bicentennial Commission and the United States government, based on applicant’s claims in the specimen of record and the fact that “swords have historically been presented by grateful sovereigns and governments to persons who have been honored by such gifts and that ceremonial swords are on display in the museum at Mt. Vernon”).

Furthermore, the question of the registrability of a mark under §2(a) “is determined in each case by the nature of the goods or services in connection with which the mark is used and the impact of such use on the purchasers of goods or services of this type.”NASA v. Record Chemical Co. Inc., 185 USPQ 563, 568 (TTAB 1975) . Thus, the identified goods or services must be scrutinized in the context of the current marketplace to determine whether they are of the type to be offered by United States government agencies and instrumentalities. For instance, if the evidence supports a finding that it is commonplace for government agencies to sell or license the sale of consumer merchandise featuring agency names or acronyms, such as clothing, toys, key chains, and calendars, a false connection with a government agency would be presumed if that agency name or acronym is used in connection with those goods and, therefore, the mark should be refused registration under §2(a).

The §2(a) false suggestion of a connection refusal and the procedures stated above also apply to marks containing names of, and acronyms and terms for, United States government programs (e.g., Medicare or FAFSA), military projects (e.g., BigDog), and quasi-government organizations (e.g., Smithsonian Institution). The examining attorney may also require the applicant to provide additional information about the mark and/or the goods or services, under Trademark Rule 2.61(b).37 C.F.R. §2.61(b).

Disclaiming the name of, or acronym for, the United States government agency or instrumentality to which the mark refers generally will not overcome the §2(a) refusal. SeeTMEP §1213.03(a)regarding unregistrable components of marks. If the test for false suggestion of a connection under §2(a) is not met, the examining attorney must still determine whether the applicant is authorized to register the designation in the mark. If, based on the record, the applicant lacks authorization from the government agency or instrumentality to register the mark, the examining attorney must refuse under §§1 and 45 of the Trademark Act.SeeTMEP §1201.06(c).

1203.03(c)(iii) False Suggestion of a Connection: Case References

False suggestion of a connection was found in the following cases:In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218 (Fed. Cir. 2009) (holding SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS, both for cigarettes, falsely suggest a connection with the Shinnecock Indian Nation);In re Sauer, 27 USPQ2d 1073 (TTAB 1993) ,aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (finding registration of BO BALL for oblong shaped leather ball with white stitching properly refused under §2(a), since use of “Bo” would be recognized by purchasers as reference to football and baseball player Bo Jackson, and there was no connection between Jackson and applicant);In re Jackson Int'l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (TTAB 2012) (affirming §2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized) for fragrance and cosmetics because the mark falsely suggests a connection with the deceased musician Benny Goodman; the record showed that Benny Goodman’s estate has a business representative that grants people the use of his name and/or persona);In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) (Board affirmed §2(a) refusal, finding U.S. CUSTOMS SERVICE and seal design for attorney services falsely suggests a connection with the government agency formerly known as the United States Customs Service and now known as the United States Customs and Border Protection);Hornby v. TJX Cos., Inc., 87 USPQ2d 1411 (TTAB 2008) (affirming refusal of registration of TWIGGY for children’s clothing, on the ground that it would falsely suggest a connection with the internationally known British model and actress who was a major celebrity in the late 1960s, finding that she retained a sufficient degree of fame or reputation that a connection would still be presumed by consumers seeing the mark TWIGGY on children’s clothing as of the date on which respondent’s registration issued in 2000);Association Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007) (granting petition to cancel registration of MARC CHAGALL for vodka because the totality of the evidence of record established a false suggestion of a connection with the painter Marc Chagall);In re White, 80 USPQ2d 1654 (TTAB 2006) (affirming refusal of MOHAWK for cigarettes under §2(a), on the ground that it would falsely suggest a connection with the federally recognized tribe the St. Regis Band of Mohawk Indians of New York);In re White, 73 USPQ2d 1713 (TTAB 2004) (holding APACHE, for cigarettes, falsely suggests a connection with the nine federally recognized Apache tribes);In re Urbano, 51 USPQ2d 1776 (TTAB 1999) (holding SYDNEY 2000, used for advertising and business services and communication services, falsely suggests connection with Olympic Games, since general public would recognize phrase as referring unambiguously to Olympic Games to be held in Sydney, Australia, in 2000; entire organization that comprises Olympic games qualifies as “institution.”);In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282 (TTAB 1997) (holding NAFTA, used on “promotion of trade and investment” services, falsely suggests connection with North American Free Trade Agreement; NAFTA qualifies as institution because it encompasses treaty, supplemental agreements, and various commissions, committees and offices created by those documents);In re Sloppy Joe’s Int’l Inc.,43 USPQ2d 1350 (TTAB 1997) (holding use of mark SLOPPY JOE’S, with design that includes portrait of Ernest Hemingway, falsely suggests connection with deceased writer);Bd. of Tr. of Univ. of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (granting petition to cancel registration of BAMA, for shoes, slippers, stockings, socks, and insoles, and finding that the evidence of record indicated that BAMA points uniquely to the University of Alabama and thus falsely suggests a connection with the University); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (holding WESTPOINT, for shotguns and rifles, to falsely suggest a connection with an institution, the United States Military Academy);Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985) (denying applicant’s motion for summary judgment since evidence of record supported an association of MARGARITAVILLE with the public persona of opposer Jimmy Buffett);In re U.S. Bicentennial Soc'y, 197 USPQ 905 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, to falsely suggest a connection with the American Revolution Bicentennial Commission and the United States government); In re Nat'l Intelligence Acad., 190 USPQ 570 (TTAB 1976) (holding NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, to falsely suggest a connection with the United States government);In re Nat’l Collection & Credit Control, 152 USPQ 200 (TTAB 1966) (holding the word “national” along with an outline representation of the United States or a representation of an eagle used for collection and credit services falsely suggests a connection with United States government).

False suggestion of a connection was not found in the following cases:Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983), aff’g213 USPQ 594 (TTAB 1982) (holding NOTRE DAME and design, for cheese, not to falsely suggest a connection with the University of Notre Dame. “As the Board noted, ‘Notre Dame’ is not a name solely associated with the University. It serves to identify a famous and sacred religious figure and is used in the names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris, France. Thus it cannot be said that the only ‘person’ which the name possibly identifies is the University and that the mere use of NOTRE DAME by another appropriates its identity.”);Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496-99 (TTAB 2016) (finding applicant’s use of MARATHON MONDAY on clothing does not falsely suggest a connection with opposer because the evidence did not establish that MARATHON MONDAY is perceived by the relevant public as a close approximation of the name or identity of opposer, and frequent and various third-party uses of MARATHON MONDAY indicated that the term does not point uniquely and unmistakably to opposer);In re MC MC S.r.l.,88 USPQ2d 1378, 1381 (TTAB2008) (reversing §2(a) refusal of MARIA CALLAS for jewelry and other goods, because the record contained contradictory evidence as to the existence of anyone currently possessing rights in the name “Maria Callas,” and resolving doubt in favor of applicant “removes the possibility that we might be denying registration to an applicant based on non-existent rights,” and because a person or entity claiming rights in a name or persona has recourse since §2(a) is not time barred);In re Los Angeles Police Revolver & Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) (holding slogan TO PROTECT AND TO SERVE, used by applicant Los Angeles Police Revolver and Athletic Club, Inc.,does notfalsely suggest a connection with the Los Angeles Police Department, where evidence showed an actual longstanding commercial connection, publicly acknowledged and endorsed by both parties);Internet Inc. v. Corp. for Nat’l Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) (holding cancellation petitioners failed to state claim for relief where they have not alleged, and cannot reasonably allege, that the term INTERNET points uniquely and unmistakably to their own identity or persona);Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1471 (TTAB 1990) (holding RIT-Z in stylized form, for toilet seats, not to falsely suggest a connection with opposer, the Board observing that there was “no evidence of record directed to showing a connection of applicant’s mark with opposer corporation, The Ritz Hotel Limited”);In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990) (holding NRC and design, for radiation and chemical agent monitors, electronic testers, and nuclear gauges, not to falsely suggest a connection with the U.S. Nuclear Regulatory Commission in view of applicant’s use of NRC long prior to the inception of that agency); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671, 1676 (TTAB 1987) (dismissing opposition to the registration of SPACE SHUTTLE for wines and finding “shuttle” to be a generic term for a space vehicle or system. “Where a name claimed to be appropriated does not point uniquely and unmistakably to that party’s personality or ‘persona,’ there can be no false suggestion.”);In re Mohawk Air Serv. Inc., 196 USPQ 851 (TTAB 1977) (holding MOHAWK 298 to not falsely suggest a connection with the U.S. Army and the Army’s use of the term “Mohawk” to identify one of its airplanes, since there was no evidence of record that the Army continuously used that term since 1958, that the public is aware of such use, or that the public would associate “Mohawk” named airplanes with the Army);NASA v. Record Chem. Co. Inc., 185 USPQ 563 (TTAB 1975) (dismissing opposition to registrations of APOLLO 8 for moth preventatives and mothproofing agent-air freshener because, while NASA is a juristic person and prior user of the terms APOLLO and APOLLO 8 for its space missions, it is unlikely that the average purchaser of applicant’s goods would assume NASA to be source or sponsorship of the goods or mistakenly believe that the goods are of NASA space exploration technology);FBI v. Societe: “M.Bril & Co.”, 172 USPQ 310 (TTAB 1971) (dismissing opposition to registration of FBI FABRICATION BRIL INTERNATIONAL for clothing since it is unreasonable that the public would assume applicant’s goods originate with, are sponsored or endorsed by, or associated with the Federal Bureau of Investigation, finding that “FBI” represents “Fabrication Bril International” and purchasers will see the entire composite mark on the goods and not just “FBI,” and noting that both the United States government and the Federal Bureau of Investigation are juristic persons);In re Horwitt, 125 USPQ 145, 146 (TTAB 1960) (holding U. S. HEALTH CLUB registrable for vitamin tablets. “Considering both the nature of the mark and the goods, it is concluded that the purchasing public would not be likely to mistakenly assume that the United States Government is operating a health club, that it is distributing vitamins, or that it has approved applicant’s goods.”);Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with the deceased artist Leonardo Da Vinci).

1204 Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation

15 U.S.C. §1052  (Extract)

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

Section 2(b) of the Trademark Act,15 U.S.C. §1052(b),  bars the registration on either the Principal Register or the Supplemental Register of marks that consist of or comprise (whether consisting solely of, or having incorporated in them) the flag, coat of arms, or other insignia of the United States, of any state or municipality of the United States, or of any foreign nation.SeeCeccato v. Manifattura Lane Gaetano Marzotto & Figli, S.p.A., 32 USPQ2d 1192, 1196 (TTAB 1994) (noting that “it would appear that the reference to ‘municipality’ in the Statute is to a municipality in the United States, and that prohibition of registration with respect to foreign coats of arms, etc., is to those of the countries themselves, rather than to those of the states or municipalities of the foreign countries”). Moreover, registration of all such official insignia is barred regardless of the identity of the applicant, that is, the statutory prohibition allows no exception even when the applicant is a government entity seeking to register its own flag, coat of arms, or other insignia.In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).

Section 2(b) also bars the registration of marks that consist of or comprise any simulation of such symbols. “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). Whether a mark comprises a simulation must be determined from a visual comparison of the proposed mark vis-à-vis replicas of the flag, coat of arms, or other insignia in question.In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973) . Focus must be on the general recollection of the flag or insignia by purchasers, “without a careful analysis and side-by-side comparison.”In re Advance Indus. Sec., 194 USPQ at 346.

The incorporation in a mark of individual or distorted features that are merely suggestive of flags, coats of arms, or other insignia does not bar registration under §2(b).See Knorr-Nahrmittel A.G. v. Havland Int’l, Inc., 206 USPQ 827, 833 (TTAB 1980) (holding flag designs incorporated in the proposed mark NOR-KING and design not recognizable as the flags of Denmark, Norway, and Sweden, the Board finding that “[a]ll that the record reflects is that the mark contains a representation of certain flags, but not the flag or flags of any particular nation”);In re Advance Indus. Sec., 194 USPQ at 346 (finding proposed mark comprising a gold and brown triangular shield design with the words “ADVANCE SECURITY” predominately displayed in the upper central portion of the mark “creates an overall commercial impression distinctly different from the Coat of Arms”);In re Waltham Watch Co., 179 USPQ at 60 (finding mark comprising wording with the design of a globe and flags not to be a simulation of the flags of Switzerland and Great Britain, stating that “although the flags depicted in applicant’s mark incorporate common elements of flag designs such as horizontal or vertical lines, crosses or stars, they are readily distinguishable from any of the flags of the nations alluded to by the examiner.”).

Section 2(b) differs from the provision of §2(a) regarding national symbols (seeTMEP §1203.03(a)(iii)) in that §2(b) requires no additional element, such as a false suggestion of a connection, to preclude registration.

1204.01 Flags and Simulations of Flags
1204.01(a) Flags and Simulations of Flags are Refused

Registration must be refused under §2(b) if the design sought to be registered includes a true representation of the flag of the United States, any state, municipality, or foreign nation, or is a simulation thereof. A refusal must be issued if the design would be perceived by the public as a flag, regardless of whether other matter appears with or on the flag.In re Family Emergency Room LLC, 121 USPQ2d 1886, 1887-88 (TTAB 2017). The examining attorney should consider the following factors, in regard to both color drawings and black-and-white drawings, to determine whether the design is perceived as a flag: (1) color; (2) presentation of the mark; (3) words or other designs on the drawing; and (4) use of the mark on the specimen(s).Cf.id. at 1888 (discussing the factors to consider in determining whether matter in a mark will be perceived as the Swiss flag).

Generally, a refusal should be made where a black-and-white drawing contains unmistakable features of the flag, contains features of the flag along with indicia of a nation, or is shown on the specimen in the appropriate colors of that national flag. For example, merely amending a "red, white, and blue" American flag to a black-and-white American flag will not overcome a §2(b) refusal. However, black-and-white drawings of flags that consist only of common geometric shapes should not be refused unless there are other indicia of the country on the drawing or on the specimens. For example, a black-and-white drawing showing three horizontal rectangles would not be refused as the Italian or French flag unless there is something else on the drawing or on the specimen that supports the refusal.

Examples of Situations Where Registration Should Be Refused. The following are examples of situations where registration should be refused, because all significant features of the flag are present or a simulation of the flag is used with state or national indicia:

American flag in oval with bunting on sides and the words "Schenk Fuels Services"
Italian flag and cup with words "Buon Giorno Caffe" on it
Man waving American flag
Man holding American flag with words "Victorious America" above it
American flag with words "American Hot Sauce" on it
Doctor and American flag
Italian flag with words "That's Italian" above it.

The wording "That’s Italian" emphasizes that the banner design is a simulation of a flag.

Swiss flag with words "Swiss Guard" below it

This design is refused because the word SWISS emphasizes that the design is intended to be a simulation of the Swiss flag.

Texas flag and guitar with words "Texas Rock Association"

This black-and-white mark is refused because the word Texas emphasizes that the design is intended to be the state flag of Texas.

SeeTMEP §§1205.01(d)-1205.01(d)(iii) regarding procedures for marks containing the Swiss Confederation coat of arms or flag.

1204.01(b) Stylized Flag Designs are not Refused under §2(b)

Marks containing elements of flags in a stylized or incomplete form are not refused under §2(b). The mere presence of some significant elements of flags, such as stars and stripes (U.S. flag) or a maple leaf (Canadian flag), does not necessarily warrant a refusal.

If the flag design fits one of the following scenarios, the examining attorney should not refuse registration under §2(b):

  • The flag design is used to form a letter, number, or design.
  • The flag is substantially obscured by words or designs.
  • The design is not in a shape normally seen in flags.
  • The flag design appears in a color different from that normally used in the national flag.
  • A significant feature is missing or changed.

Examples. The following are examples of stylized designs that are registrable under §2(b):

Flag Forms Another Design, Number, or Letter - No §2(b) Refusal

Outline of continental USA with American flag as the background of the country and with the words "Stateside USA"
License plate design with the words "USA ROADSIDE" and with "USA" having an American flag background

Flag Is Substantially Obscured By Other Matter - No §2(b) Refusal

The acronym "S.A.V.E." with stars for periods and the words "Support American Volunteer Efforts" below, all on an American flag backround.

Flag Design Is Not In the Normal Flag Shape - No §2(b) Refusal

The words "Government Convention Emerging Technologies" with a black base and a partial outline of an American flag to the right such that the whole gives the impression of a semi truck with trailer.
Two vertical American flags

Significant Feature of the Flag Is In a Different Color - No §2(b) Refusal

American flag with red, white, and green stripes and the wording "This land is Mi Tierra"

NOTE: Stripes in flag are red, white, and green.

Significant Feature Is Changed - No §2(b) Refusal

American flag with the stars in the shape of a "U"
1204.01(c) Case Law Interpreting "Simulation of Flag"

The Trademark Trial and Appeal Board found that no simulation of a flag existed in the following cases:In re Am. Red Magen David for Israel, 222 USPQ 266, 267 (TTAB 1984) ("As to the State of Israel, it is noted that the flag of that nation consists essentially of a light blue Star of David on a white background. In the absence of any evidence that the State of Israel is identified by a six-pointed star in any other color, we conclude that only a light blue six-pointed star would be recognized as the insignia thereof.");In re Health Maint. Orgs., Inc., 188 USPQ 473 (TTAB 1975) (holding dark cross, with legs of equal length, having a caduceus symmetrically imposed thereon sufficiently distinctive from Greek red cross and flag of Swiss Confederation).

1204.01(d) Description of the Mark

The description of the mark should make it clear that the design is a stylized version of the national flag, if accurate. For example, a statement that "the mark consists of the stylized American flag" or "the mark consists of the stylized American flag in the shape of the letters USA" are acceptable descriptions.

1204.01(e) Flags Not Presently Used as National Flags

Flags of former countries, states, or municipalities are not refused under §2(b). For example, the flags of now non-existent countries such as the German Democratic Republic (East Germany) or Yugoslavia are not refused. However, former flags of existing countries, states, or municipalities are refused under §2(b). For example, the original flag of the United States representing the 13 colonies should be refused.

1204.02 Government Insignia
1204.02(a) Designs that are Insignia Under §2(b) Must Be Refused

Flags and coats of arms are specific designs formally adopted to serve as emblems of governmental authority. The wording "other insignia" should not be interpreted broadly, but should be considered to include only those emblems and devices that also represent governmental authority and that are of the same general class and character as flags and coats of arms.

The following are insignia of the United States for purposes of §2(b):

  • Great Seal of the United States
  • Presidential Seal
  • Seals of Government Agencies

The Trademark Trial and Appeal Board has construed the statutory language as follows:

[T]he wording “or other insignia of the United States” must be restricted in its application to insignia of the same general class as “the flag or coats of arms” of the United States. Since both the flag and coat or [sic] arms are emblems of national authority it seems evident that other insignia of national authority such as the Great Seal of the United States, the Presidential Seal, and seals of government departments would be equally prohibited registration under Section 2(b). On the other hand, it appears equally evident that department insignia which are merely used to identify a service or facility of the Government are not insignia of national authority and that they therefore do not fall within the general prohibitions of this section of the Statute.

In re U.S. Dep't of the Interior, 142 USPQ 506, 507 (TTAB 1964) (finding logo comprising the words “NATIONAL PARK SERVICE” and “Department of the Interior,” with depiction of trees, mountains, and a buffalo, surrounded by an arrowhead design, not to be an insignia of the United States). The Trademark Trial and Appeal Board reaffirmed this interpretation inIn re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009), by affirming the §2(b) refusal since applicant’s seal design was virtually identical to the seal used by the United States Department of the Treasury.

1204.02(b) Examples of Insignia That Should Be Refused Under §2(b)

Examples: The following are examples of insignia that should be refused under §2(b):

Great Seal of the United StatesGreat Seal or Coat Of Arms of United States
Seal of The President of The United StatesSeal of the President of the United States
The Official Seal of a Government AgencySeal of U.S. Department of Commerce
1204.02(c) Examples of Designs That Should Not Be Refused Under §2(b)

Designs that do not rise to the level of being emblems of national authority, or emblems of state or municipal authority, should not be refused. Exception: As a result of the enactment ofPublic Law 98 525 on October 19, 1984, the initials, seal, and emblem of the United States Marine Corps are “deemed to be insignia of the United States,” under10 U.S.C. §7881. The amendments adding this section do not affect rights that vested before October 19, 1984. Applications claiming use after October 19, 1984 must be refused.

The following are examples of designs that are not barred from registration under §2(b):

Designs That Identify Governmental Departments - No §2(b) Refusal

U.S. Army logo
LAPD logo

Monuments, Statues, Buildings - No §2(b) Refusal

Upper portion of the Statue of Liberty with the wording "American Piers"
Eiffel Tower with palm trees and the wording "Crepe Maker"
The outline of the U.S. Capitol Building in the background with the words "Capitol Portland Cement"

Objects Used By The Government - No §2(b) Refusal

A mailbox with the US Postal Service logo on the side
The wording "SHOT Space Hardware Optimization Technology, Inc." with the center of the "H" in "SHOT" comprising a space shuttle taking off.

Words or Initials that Identify People or Departments in The Government - No §2(b) Refusal

  • U.S. Park Ranger
  • U.S. Department of Transportation
  • DOD - Department of Defense
1204.02(d) Case Law Interpreting Insignia Under §2(b)

The following cases provide examples of matter that was heldnot to be government insignia under §2(b):

  • (1)Department insignia that shows a service or facility of a federal department are not refused registration under §2(b).SeeIn re United States Dep't of the Interior, 142 USPQ 506, 507 (TTAB 1964) (finding insignia of the National Park Service registrable).
  • (2)Monuments, statues, or buildings associated with the United States such as the White House, Washington Monument, and Statue of Liberty, are not refused registration under §2(b).SeeLiberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960) ("That the Statue of Liberty is not a part of the ‘insignia of the United States’ is too clear to require discussion.").
  • (3)Designs of objects used by the U.S. government are not refused registration under §2(b).SeeIn re Brumberger Co., Inc., 200 USPQ 475 (TTAB 1978) (finding representation of the U.S. mailbox was not to be an insignia of the United States. However, the Board affirmed a refusal to register the mark under §2(a) because of a false connection with the United States Postal Service).
  • (4)Initials or words that identify people or departments of a government agency. Letters that merely identify people and things associated with a particular agency or department of the United States government, instead of representing the authority of the government or the nation as a whole, are generally not considered to be “insignia of the United States” within the meaning of §2(b).See U.S. Navy v. United States Mfg. Co., 2 USPQ2d 1254 (TTAB 1987) (finding USMC, the initials of the Marine Corps, which is part of the Navy, which itself is within the Department of Defense, cannot be construed as an “other insignia of the United States” under §2(b) of the Lanham Act). Note: As a result of the enactment of Public Law 98 525 on October 19, 1984, the initials, seal, and emblem of the United States Marine Corps are “deemed to be insignia of the United States,” under 10 U.S.C. §7881, pertaining to unauthorized use of Marine Corps insignia. However, “USMC” was not so protected when the applicant began using its stylized version of those letters as a mark. In view of the provision in Public Law 98-525 that the amendments adding Chapter 663 (10 U.S.C. §7881)  shall not affect rights that vested before the date of its enactment, the majority of the Board found that enactment of the law did not adversely affect the mark’s registrability, stating that “opposer has not shown that applicant’s mark was an insignia of the United States prior to the law making it one, or that the law effectively bars registration to applicant.”Id. at 1260.
1204.03 Other Refusals May be Appropriate

Marks that are not barred by §2(b) may be refused if prohibited by other sections of the Trademark Act. For example, a design may not be an insignia under §2(b) but may be refused under §2(a).See, e.g., In re Brumberger Co., Inc., 200 USPQ 475 (TTAB 1978) (finding representation of the U.S. mailbox was not an insignia under §2(b) but was properly refused under §2(a) because it falsely suggested a connection with the United States Postal Service). Likewise, §2(d) may be a bar to registering a stylized flag that is not prohibited under §2(b).

See alsoTMEP §1205.01 andTMEP Appendix C regarding subject matter that is protected by statute.

1204.04 Responding to §2(b) Refusal
1204.04(a) Absolute Bar to Registration

Because §2(b) provides an absolute bar to registration, a disclaimer of the prohibited flag or insignia or an amendment to seek registration under §2(f) or on the Supplemental Register will not overcome a refusal.

The statute does not list any exceptions that would allow for countries, states, or municipalities to register their own flags or insignia. Applications for marks that contain flags, coats of arms, or government insignia, even if filed by the relevant state, country, or municipality, must be refused.

1204.04(b) Deletion of §2(b) Matter

Section 1 Applications. The deletion of the unregistrable §2(b) matter, which no party can have trademark rights in, will not be considered a material alteration if the matter is separable from the other elements in the mark, e.g., if the flag design is spatially separated from other matter in the mark or is used as a background for other words or designs. If the flag is deleted from the drawing, the specimen that shows the flag is still acceptable. The examining attorney must ensure that the design search codes are corrected whenever a change is made to the drawing.

No deletion is allowed if the flag design is integrated into the overall mark in such a way that deletion would significantly change the commercial impression of the mark.

An amendment to the drawing showing the outline of the flag design absent the interior material is not permitted. Amending the mark from a national, state, or municipal flag to a blank flag changes the commercial impression of how the mark is used, or intended to be used, in commerce.

Section 44 Applications. Amendments to the drawing to delete §2(b) matter are not permitted because the drawing must be a substantially exact representation of the mark as registered in the foreign country.TMEP §1011.01.

Section 66(a) Applications. Amendments to the drawing to delete the §2(b) matter are not permitted because the Madrid Protocol does not permit the amendment of a mark in an international registration.TMEP §807.13(b).

1204.04(b)(i) Examples of Matter That May and May Not Be Deleted

The Flag Design May Be Deleted If It Is A Separable Element:

American flag in oval with bunting on sides and the words "Schenk Fuels Services"
Italian flag and cup with words "Buon Giorno Caffe" on it
Doctor and American flag

The Flag May Not Be Deleted If It Is Integrated Into the Overall Design:

American flag with baseball cap on the flagpole, with the letter "N" on the cap
American and British flags
1204.05 Resources

Internet Evidence

Many useful websites present images of national and state flags, government insignia, and coats of arms:

Flags of Foreign Nations:

United States, State, and Territory Flags:

Insignia:

Coat of Arms - Gallery of Coats of Arms:

Non Registration Data: X-Search and TESS

The "89" series code (i.e., serial numbers beginning with the digits "89") includes designations protected by federal statute or regulation, designations submitted to the USPTO from the IB pursuant to Article 6ter of the Paris Convention, and official insignia of federally and state-recognized Native American tribes. These submissions are sometimes referred to as "non-registrations."SeeTMEP §§1205.01─1205.03.

1205 Refusal on Basis of Matter Protected by Statute or Convention
1205.01 Statutory Protection

Various federal statutes and regulations prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and characters adopted by the United States government, including any agency or instrumentality thereof, or particular national and international organizations. These designations are reserved for the specific purposes prescribed in the relevant statute and must be free for use in the prescribed manner. SeeAppendix Cfor a nonexhaustive list of United States statutes protecting designations of certain government agencies and instrumentalities.

For example, Congress has created statutes that grant exclusive rights to use certain designations to federally created private corporations and organizations. Violation of some of these statutes may be a criminal offense, e.g., 18 U.S.C. §§705  (regarding badges, medals, emblems, or other insignia of veterans’ organizations); 707 (4-H Club); 711 (“Smokey Bear”); and 711a (“Woodsy Owl” and slogan, “Give a Hoot, Don’t Pollute”). Other statutes provide for civil enforcement, e.g., 36 U.S.C. §§153104  (National Society of the Daughters of the American Revolution); 30905 (Boy Scouts); 80305 (Girl Scouts); 130506 (Little League); and 21904 (The American National Theater and Academy).

If the USPTO is made aware of a federal statute or regulation that prohibits or restricts the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and characters, they are entered into the USPTO search records to assist USPTO examining attorneys. These designations are assigned a serial number in the “89” series code (i.e., serial numbers beginning with the digits “89,” sometimes referred to as “non-registrations”). Information about the statutory restriction should be discovered in an examining attorney’s search and a copy of the statutory language may be in the search record.

The following are examples of the protection of words and symbols by statute:

  • (1) The Copyright Act of 1976 includes provisions regarding the use of appropriate notices of copyright. 17 U.S.C. §§101-1332.  These include provisions concerning the use of the letter “C” in a circle – ©, the word “Copyright” and the abbreviation “Copr.” to identify visually perceptible copies (17 U.S.C. §401);  the use of the letter “P” in a circle to indicate phonorecords of sound recordings (17 U.S.C. §402);  and the use of the words “mask work,” the symbol *M* and the letter “M” in a circle to designate mask works (17 U.S.C. §909).  The Copyright Act designates these symbols to indicate that the user of the symbol is asserting specific statutory rights.
  • (2) Red Cross Emblem or the designations “Red Cross” and “Geneva Cross”: Under 18 U.S.C. §706, the use of the Red Cross emblem as well as the designations “Red Cross” and “Geneva Cross,” or any imitation thereof, is prohibited except by the American National Red Cross, and by sanitary and hospital authorities of the armed forces of the United States. The statute carves out an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before June 25, 1948.See In re Health Maint. Orgs., Inc., 188 USPQ 473 (TTAB 1975) (holding mark comprising a dark cross with legs of equal length on which a caduceus is symmetrically imposed (representation of caduceus disclaimed) registrable, the Board finding the mark readily distinguishable from the Greek red cross (on white background) and the Swiss confederation coat of arms (white cross on red background)). SeeTMEP §§1205.01(c)–1205.01(c)(iv) for further information.
  • (3) False advertising or misuse of names to indicate a federal agency is proscribed by 18 U.S.C. §709.  For example, this provision prohibits knowing use, without written permission of the Director of the Federal Bureau of Investigation, of the words “Federal Bureau of Investigation,” the initials “F.B.I.” or any colorable imitation, in various formats “in a manner reasonably calculated to convey the impression that such advertisement, . . . publication, . . . broadcast, telecast, or other production, is approved, endorsed, or authorized by the Federal Bureau of Investigation.” Thus, an examining attorney must refuse to register such matter, pursuant to 18 U.S.C. §709,  if its use is reasonably calculated to convey an approval, endorsement, or authorization by the Federal Bureau of Investigation.
  • (4) Section 110 of the Amateur Sports Act of 1978, 36 U.S.C. §220506,  protects various designations associated with the Olympics. The United States Supreme Court has held that the grant by Congress to the United States Olympic Committee of the exclusive right to use the word “Olympic” does not violate the First Amendment.San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 3 USPQ2d 1145 (1987) (concerning petitioner’s use of “Gay Olympic Games”). SeeTMEP §§1205.01(b)–1205.01(b)(vii) for information about marks comprising Olympic matter.
  • (5) In chartering the Blinded Veterans Association, Congress granted it the sole right to use its name and such seals, emblems, and badges as it may lawfully adopt. 36 U.S.C. §30306.  This protection of its exclusive right to use “Blinded Veterans Association” does not extend to the term “blinded veterans,” which has been found generic.Blinded Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035, 10 USPQ2d 1432 (D.C. Cir. 1989).
  • (6)Red Crescent Emblem, Third Protocol Emblem, or the designations “Red Crescent” and “Third Protocol Emblem."Under 18 U.S.C. §706a,  the use of the distinctive emblems the Red Crystal and the Red Crescent, as well as the designations “Third Protocol Emblem” and “Red Crescent,” or any imitation thereof, is prohibited, except by those authorized to wear, display, or use them under the provisions of the Geneva Conventions. The statute carves out an exception for use of any emblem, sign, insignia, or words which 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. SeeTMEP §§1205.01(a)–1205.01(a)(vi) for further information.
  • (7)Swiss Confederation Coat of Arms. Under 18 U.S.C. §708,  use of the Swiss Confederation coat of arms as a trademark or for any other commercial purpose is prohibited. Because the statute does not specify any authorized users, 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 In re Health Maint. Orgs., Inc., 188 USPQ 473 (TTAB 1975) (holding mark comprising a dark cross with legs of equal length on which a caduceus is symmetrically imposed (representation of caduceus disclaimed) registrable, the Board finding the mark readily distinguishable from the Greek red cross (on white background) and the Swiss confederation coat of arms (white cross on red background)). SeeTMEP §§1205.01(d)–1205.01(d)(iii) for further information.

Usually, the statute will define the appropriate use of a designation and will prescribe criminal penalties or civil remedies for improper use. However, the statutes themselves do not provide the basis for refusal of trademark registration. To determine whether registration should be refused in a particular application, the examining attorney should consult the relevant statute to determine the function of the designation and its appropriate use. If a statute provides that a specific party or government agency has the exclusive right to use a designation, and a party other than that specified in the statute has applied to register the designation, the examining attorney must refuse registration 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  and1127, in addition to the relevant statute.SeeTMEP §907.

Depending on the nature and use of the mark, other sections of the Trademark Act may also bar registration and must be cited where appropriate. For example, it may be appropriate for the examining attorney to 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 a person, institution, belief, or national symbol specified in the statute (e.g., the United States Olympic Committee).SeeTMEP §§1203.03(c)–1203.03(c)(iii). It may be appropriate to refuse registration under §2(b),15 U.S.C. §1052(b), for matter that comprises a flag, coat of arms, or other similar insignia.SeeTMEP §1204. It may be appropriate to refuse registration under §2(d),15 U.S.C. §1052(d),  if the party specified in the statute owns a registration for a mark that is the same or similar.

In some instances, it may be appropriate for the examining attorney to refuse registration pursuant to §§1, 2, and 45 of the Trademark Act,15 U.S.C. §§10511052, and1127, on the ground that the subject matter would not be perceived as a trademark. For service mark applications, §3 of the Act,15 U.S.C. §1053,  must also be cited as a basis for refusal.

To determine what action is appropriate, the examining attorney should look to the particular use of a symbol or term by the applicant. For example, where it is evident that the applicant has merely included a copyright symbol in the drawing of the mark inadvertently, and the symbol is not a material portion of the mark, the examining attorney must indicate that the symbol is not part of the mark and require that the applicant amend the drawing to remove the symbol, instead of issuing statutory refusals of the types noted above.

Examining attorneys should also consider whether registration of matter comprised in whole or in part of designations notified pursuant to Article 6terof the Paris Convention and entered into the USPTO’s search records may be prohibited by §§2(a) and 2(b) of the Trademark Act,15 U.S.C. §§1052(a)  and1052(b).SeeTMEP §1205.02.

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).

Design of the Third Protocol Emblem, composed of a red diamond on a white background
Design of a Red Crescent, composed of a red crescent on a white background

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 (seeTMEP §1205.01).

1205.01(a)(i) First Use After December 8, 2005

If a party other than an authorized party (seeTMEP §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.See18 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  and1127.

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. §§10511052, and1127, 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. §§10511052,1053, and1127, as appropriate.SeeTMEP §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 goods or services may include, but are not limited to, medical or first-aid assistance, religious and charitable services, clothing, and food items. 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. §§10511052, and1127, 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. §§10511052,1053, and1127, as appropriate.SeeTMEP §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.SeeTMEP §§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.SeeIn re Brown,119 USPQ2d 1350, 1351 (TTAB 2016);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 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 drawing or foreign registration shows the symbol in red;
  • the drawing is not in color, but the specimen shows the symbol in red; or
  • the drawing is not in color, but it includes the wording “Red Crescent” or “Third Protocol Emblem.”

SeeTMEP §§1205.01(a) and1205.01(a)(i). If the drawing shows the symbol in red, the refusals may be withdrawn if the applicant amends the drawing to a different, non-prohibited color scheme, or a non-color version of the drawing (i.e., a black-and-white or gray scale drawing), and submits a proper substitute specimen showing use of the mark in a color other than red. If the drawing is not in color, but the specimen shows the symbol in red, the refusals may be withdrawn if the applicant 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). 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 inTMEP §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.SeeTMEP §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. SeeTMEP §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks, andTMEP §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).

1205.01(b) Examination Procedures for Marks Comprising Matter Related to the United States Olympic Committee or the Olympics

Following passage of the Amateur Sports Act of 1978, 36 U.S.C. §380,  unauthorized use of words and symbols associated with the United States Olympic Committee (“USOC”) or the Olympics subjected the user to civil actions and remedies. In 1998, Congress amended the 1978 act to the Ted Stevens Olympic and Amateur Sports Act (“OASA”), 36 U.S.C. §220506.  In the amended Act, Congress designated certain Olympic-related words and symbols as being the exclusive property of the USOC, subject to limited exceptions. 36 U.S.C.  §220506.

The USOC has the exclusive right to use the name “United States Olympic Committee” and the words “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Pan American,” “Paralympic,” “Paralympiad,” “America Espirito Sport Fraternite,” or any combination of these words. 36 U.S.C. §220506(a).  The statutory protection also extends to the International Olympic Committee’s symbol of five interlocking rings, the International Paralympic Committee’s symbol of three TaiGeuks, and the Pan-American Sports Organization’s symbol of a torch surrounded by concentric rings. Id. The statute permits the USOC to authorize its contributors and suppliers to use the enumerated Olympic-related words or symbols, 36 U.S.C. §220506(b),  exempts certain pre-existing uses and geographic references, 36 U.S.C. §220506(d),  and allows the USOC to initiate civil-action proceedings to address unauthorized use, 36 U.S.C.  §220506(c).

Proposed marks that contain the designated Olympic-related words or symbols, or any combination thereof, cannot be registered on the Principal or Supplemental Register (nor can the matter be disclaimed) and must be refused registration 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  and1127, for trademark applications or §§1, 3, and 45,15 U.S.C. §§10511053, and1127, for service mark applications, as well as the OASA. Other statutory refusals under the Trademark Act may also bar registration, such as falsely suggesting a connection under15 U.S.C. §§1052(a)  and likelihood of confusion under15 U.S.C. §§1052(d),  and should be issued as appropriate.SeeTMEP §1205.01(b)(ii).

1205.01(b)(i) Nature of the Mark

Under 36 U.S.C. §220506(a),  no applicant other than the USOC is capable of having lawful use in commerce of marks containing the designated Olympic-related words and symbols, or any combination thereof, and an applicant cannot obviate the spirit of the law by crafting a mark that combines a designated Olympic-related word or symbol with a non-designated word or symbol.U.S. Olympic Comm. v. O-M Bread, Inc., 29 USPQ2d 1555, 1557-58 (TTAB 1993) (sustaining opposition to registration of OLYMPIC KIDS).

A refusal for unlawful use pursuant to §§1 and 45 of the Trademark Act,15 U.S.C. §§1051  and1127 or §§1, 3, and 45,15 U.S.C. §§10511053, and1127, is required if the applicant’s mark contains the exact words or symbols, or any combination thereof, enumerated in the statute.See, e.g., In re Midwest Tennis & Track, Co., 29 USPQ2d 1386, 1388 (TTAB 1993) (reversing the refusal to register OLYMPIAN GOLDE since the mark did not comprise any of the forbidden words themselves, or a combination of them, and the statute did not encompass “simulations” of the listed words);U.S. Olympic Comm. v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497, 500 (TTAB 1984) (denying USOC’s opposition because OLYMP was not the same as OLYMPIC or OLYMPIAD, or a combination thereof, and, therefore, USOC cannot claim exclusive right of use).

1205.01(b)(ii) Issuing Other Substantive Refusals

Applications for marks comprising Olympic-related matter must also be analyzed for other substantive refusals in the same manner as any other application. The most common refusals that may accompany a refusal for unlawful use, or be issued by themselves or in combination, are a §2(a) refusal for deception or falsely suggesting a connection with the USOC or the Olympics and a §2(d) refusal for likelihood of confusion.15 U.S.C. §1052(a)  and(d). SeeTMEP §§1203.02–1203.02(f)(ii) regarding deceptive matter,§§1203.03–1203.03(f) regarding matter falsely suggesting a connection, and§§1207–1207.04(g)(i) regarding likelihood of confusion.

As to §2(a) refusals, the Board determined that “there are various international and national organizations pertaining to the Olympic Games” and that “the entire organization which comprises the Olympic Games, as a whole qualifies as an “institution” within the meaning of Section 2(a).”In re Urbano, 51 USPQ2d 1776, 1779-80 (TTAB 1999) (affirming the §2(a) refusal to register SYDNEY 2000 because the mark falsely suggested a connection with the Olympic Games held in Sydney, Australia in 2000;15 U.S.C. §1052(a).  Therefore, the United States Olympic Committee is part of the “institution” and entitled to protection under §2(a)).See In re Midwest Tennis & Track, Co., 29 USPQ2d 1386, 1389 (TTAB 1993) (reversing the §2(a) refusal and finding that OLYMPIAN GOLDE had multiple connotations and did not point “uniquely and unmistakably to the USOC” as would be required under §2(a));In re Kayser-Roth Corp., 29 USPQ2d 1379, 1385 (TTAB 1993) (reversing the §2(a) refusal and noting “[t]he question is not whether the word ‘Olympic’ falsely suggests a connection with the persona or identity of the United States Olympic Committee's but whether applicant's mark OLYMPIC CHAMPION does . . . [we cannot] say on the basis of the record before us that the mark OLYMPIC CHAMPION ‘points uniquely and unmistakably’ to the United States Olympic Committee inasmuch as that term may as likely point to a contestant representing a country other than the United States in the Olympic games.”);U.S. Olympic Comm. v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497, 499 (TTAB 1984) (denying USOC’s §2(a) claims since there was no evidence presented to establish that OLYMP was deceptive of the clothing goods or that OLYMP falsely suggested a connection with USOC).

Factors that may be relevant to a §2(d) refusal for likelihood of confusion include the wide variety of goods and services in connection with which marks consisting of Olympic-related matter are often used, the channels of trade in which they are found, and the level of sophistication of consumers of such Olympic-related products as t-shirts, mugs, and pins. The Board has also upheld likelihood of confusion where an applicant other than the USOC used OLYMP or LYMPIC as part of its mark.See Olymp-Herrenwaschefabriken 224 USPQ at 498 (sustaining USOC’s opposition to registration of OLYMP based on likelihood of confusion with its OLYMPIC marks);U.S. Olympic Comm. v. Org. for Sport Aviation Competition, 2002 TTAB Lexis 195 (TTAB 2002) (granting summary judgment to the USOC on the issue of likelihood of confusion against the mark SKYLYMPICS for aviation sporting events).

In proposed marks identifying specific Olympic Games by city and year, the examining attorney should consider the marks unitary, with the primary significance being that of the Olympic Games event, and not issue substantive refusals for descriptiveness or geographic descriptiveness or requirements for disclaimers.Urbano, 51 USPQ2d at 1779-80 (reversing the refusals under §§2(e)(1), 2(e)(2), and 2(e)(3) because the primary significance of the mark was as a reference to the Olympic Games).

1205.01(b)(iii) Amendments to Disclaim, Delete, or Amend the Unregistrable Wording or Symbol

If the mark is unregistrable because it includes Olympic-related matter, a disclaimer of the unregistrable matter will not render the mark registrable. If the applicant submits an amendment deleting the unregistrable matter, the examining attorney must, if appropriate, refuse registration because the amendment to the mark is material and maintain the refusal(s) based on the unregistrable symbol or designation in the alternative.

1205.01(b)(iv) Consent to Register

The USOC is permitted to authorize third parties to use and register the restricted Olympic-related words and symbols listed in the OASA. 36 U.S.C. §220506(b).  If an applicant submits proof of consent from the USOC to both use and register the mark, the statutory requirement is satisfied.

1205.01(b)(v) First Use On or After September 21, 1950

If a party other than the USOC applies to register Olympic-related matter designated in the OASA and claims a date of first use in commerce on or after September 21, 1950, the examining attorney must refuse registration 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  and1127, for trademark applications or §§1, 3, and 45,15 U.S.C. §§10511053, and1127, for service mark applications. The examining attorney must provide appropriate supporting evidence for the refusal. In addition, refusals may also be made on other relevant grounds.SeeTMEP §1205.01(b)(ii).

1205.01(b)(vi) First Use Before September 21, 1950 – Grandfather Clause

Olympic-related matter enumerated in the OASA need not be refused registration where an applicant claims pre-existing use of the mark for any lawful purpose prior to September 21, 1950. 36 U.S.C. §220506(d)(1).  An applicant making such a claim is permitted to continue lawful use of the mark for the same purpose and same goods or services. 36 U.S.C.  §220506(d)(2).

Registration of a new mark that creates a materially different commercial impression than the earlier mark, even if that mark incorporates the grandfathered wording, is not permitted.O-M Bread, Inc. v. U.S. Olympic Comm., 65 F.3d 933, 938-39, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (sustaining opposition against registration of OLYMPIC KIDS for bakery products, even though applicant had grandfather rights in OLYMPIC for the same goods, and noting that OLYMPIC and OLYMPIC KIDS are not legal equivalents).

Expanding the use of a grandfathered mark to additional goods and services is generally not permissible, and should be construed very narrowly.See In re Kayser-Roth Corp., 29 USPQ2d 1379, 1383-84 (TTAB 1993) (reversing the refusal to register OLYMPIC CHAMPION when applicant sought to expand use of the mark from various clothing goods to socks; finding that applicant had grandfather rights in the same mark for certain apparel and noting that socks have “attributes in common with the other named [clothing] goods” that permitted this additional use by applicant).

1205.01(b)(vii) 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 September 21, 1950, 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. SeeTMEP §§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.SeeJohn 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 designated Olympic-related words or symbols, or any combination thereof, actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce.SeeJohn 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 wording and/or symbols.

1205.01(b)(viii) Geographic-Reference Exception

The OASA provides a narrow geographic-reference exception for use of the word OLYMPIC for businesses, goods, or services operated, sold, and marketed in the State of Washington west of the Cascade Mountain range. 36 U.S.C. §220506(d)(3).  To qualify for the exception, the following requirements must be met: (1) the owner must not use the word OLYMPIC in combination with any of the other designated Olympic-related words or symbols; (2) it must be evident from the circumstances that use of the word OLYMPIC refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the USOC or any Olympic activity; and (3) the goods or services offered under the OLYMPIC mark must be marketed and sold locally in Washington state west of the Cascade Mountain range, and not have substantial operations, sales, and marketing outside of this area. Since these requirements severely restrict the option of interstate commerce, which is regulated by Congress and a requirement under the Trademark Act, it is unlikely an applicant will be able to obtain a federal trademark registration under this exception.

1205.01(c) Examination Procedures for Marks Containing Greek Red Cross or the Phrases “Red Cross” or “Geneva Cross”

Federal law prohibits anyone other than the American National Red Cross and its duly authorized employees and agents and the sanitary and hospital authorities of the armed forces of the United States from using the Greek red cross on a white ground or the words “Red Cross” or “Geneva Cross.” 18 U.S.C. §706.  There is an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before June 25, 1948.

1205.01(c)(i) Date of First Use is Before or After June 25, 1948

Registration of the Greek red cross on a white ground or the words “Red Cross” or “Geneva Cross” 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 June 25, 1948. However, if a party other than an authorized party applies to register the Greek red cross on a white ground, or the designation “Red Cross” or “Geneva Cross,” and claims a date of first use in commerce after June 25, 1948, 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 American National Red Cross under the statute.See18 U.S.C.  §706;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  and1127.

1205.01(c)(ii) 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 June 25, 1948, 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.SeeTMEP §§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.SeeIn re Brown,119 USPQ2d 1350, 1351 (TTAB 2016);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 Greek red cross on a white ground, or the designation “Red Cross” or “Geneva Cross,” 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 symbol or wording.

1205.01(c)(iii) Applicable Refusals

The statute prohibiting use of the Greek red cross on a white ground, or the designation “Red Cross” or “Geneva Cross,” by unauthorized parties applies to “any insignia colored in imitation thereof.” 18 U.S.C. §706.  If the mark includes a design element that would be likely to be perceived as the Geneva red cross, and it 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 drawing or foreign registration shows the symbol in red;
  • the drawing is not in color, but the specimen shows the symbol in red; or
  • the drawing is not in color, but it includes the wording Red Cross or Geneva Cross.

SeeTMEP §1205.01(c). If the drawing shows the symbol in red, the refusals may be withdrawn if the applicant amends the drawing to a different, non-prohibited color scheme, or a non-color version of the drawing (i.e., a black-and-white or gray scale drawing), and submits a proper substitute specimen showing use of the mark in a color other than red. If the drawing is not in color, but the specimen shows the symbol in red, the refusals may be withdrawn if the applicant 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). A photocopy of the original specimen is not an acceptable substitute specimen.

A mark that includes a Greek cross will generally be considered registrable, and will not be refused as a red cross 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 Cross” and “Geneva Cross,” 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 CROSS or GENEVA CROSS, with or without additional wording, must be refused under §2(a) and §§1 and 45.

For example, RED CROSSES would not be refused registration, but RED CROSS DONOR could be refused registration if the date of first use is after June 25, 1948.

1205.01(c)(iv) Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation

If the mark is unregistrable because it includes the Greek red cross on a white ground, or the designation “Red Cross” or “Geneva Cross,” 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.SeeTMEP §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. SeeTMEP §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks, andTMEP §1205.01(c)(iii)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(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. See15 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/library/publications/the-world-factbook/geos/sz.html(accessed Aug. 15, 2012).

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. Inst. of Intellectual Prop.,Frequently Asked Questions – Legislative Amendment “Swissness,”https://www.ige.ch/en/service/frequently-asked-questions/legislative-amendment-swissness/a-swiss-cross-and-the-swiss-coat-of-arms.html(accessed Aug. 15, 2012) (indicating that “[t]he Swiss cross is a perpendicular, free-standing, white cross, each arm of which is one-sixth longer than it is wide on a red background” and that “[t]he Swiss coat of arms is a Swiss cross in a triangular shield”); Britannica.com,Switzerland, flag of,http://www.britannica.com/EBchecked/topic/1355532/Switzerland-flag-of/(accessed Aug. 15, 2012); Cent. Intelligence Agency, The World Factbook,Switzerland,https://www.cia.gov/library/publications/the-world-factbook/flags/flagtemplate_sz.html(accessed Aug. 15, 2012).

Description: image of Swiss Confederation coat of arms

Swiss Coat of Arms

Description: image of  Flag of Switzerland

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. §§10511127; see alsoTMEP §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 alsoTMEP §§ 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.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.SeeTMEP §§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.SeeJohn 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));seeTMEP §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. §§10511127, in support of the refusal and explain that the finding of unlawful use is based on 18 U.S.C.  §708.SeeTMEP §1205.01. When issuing the refusal, the examining attorney should provide evidence showing the typical depiction of the Swiss coat of arms.SeeTMEP §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  (seeTMEP §§ 1205.01(c)–(c)(iv) regarding marks containing the Greek red cross andTMEP §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)and1205.01(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.SeeTMEP §§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);seeTMEP §§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.SeeIn 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);seeIn 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) ;seeTMEP §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.SeeIn 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 . SeeTMEP §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.SeeIn 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.SeeIn 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;