TMEP 1205.01: Statutory Protection

This is the October 2015 Edition of the TMEP

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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. See Appendix C for 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)). See TMEP §§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”). See TMEP §§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. See TMEP §§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)). See TMEP §§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 and 1127, in addition to the relevant statute.

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). See TMEP §§1203.03(c)–1203.03(c)(iii). Other §2(a) bases for refusal could also apply. See TMEP §§1203–1203.03(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. See TMEP §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. §§1051, 1052, and 1127, 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 6ter of 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) and 1052(b). See TMEP §1205.02.