Bitlaw

T.M.E.P. § 1205.01
Statutory Protection

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§1205) | Next Section (§1205.02)

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 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 the listings of citations to sections of the United States Code and the Code of Federal Regulations in Appendix C of this Manual.

For example, Congress has created about 70 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); 706 ("Red Cross," "Geneva Cross," and emblem of Greek red cross); 707 (4-H Club); 708 (coat of arms of the Swiss Confederation); 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).

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. These include provisions concerning the use of the letter "C" in a circle - (c), the word "Copyright" andthe 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 Act designates these symbols to perform the function of indicating that the user of the symbol is asserting specific statutory rights.
(2) Use of the Greek red cross other than by the American National Red Cross is proscribed by statute. 18 U.S.C. §706. Use of the coat of arms of the Swiss Confederation for trade or commercial purposes is proscribed by statute. 18 U.S.C. §708. See In re Health Maintenance Organizations, Inc., 188 USPQ 473 (TTAB 1975) (mark comprising a dark cross with legs of equal length on which a caduceus is symmetrically imposed (representation of caduceus disclaimed) held registrable, the Board finding the mark readily distinguishable from the Greek red cross (on white background) andthe Swiss confederation coat of arms (white cross on red background)).
(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. Under 36 U.S.C. §220506(a), the United States Olympic Committee has the exclusive right to use the name "United States Olympic Committee," its symbol and emblem, andthe words "Olympic," "Olympiad," "Citius Altius Fortius," "Pan American," "Paralympiad," "America Espirito Sport Fraternite," or any combination thereof. 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 Committee, 483 U.S. 522, 3 USPQ2d 1145 (1987) (concerning petitioner's use of "Gay Olympic Games"). Under 36 U.S.C. §220506(c), a person is subject to suit in a civil action by the Committee if such person, without the Committee's consent, uses for the purpose of trade, to induce the sale of goods or services, or to promote any theatrical exhibition, athletic performance, or competition, a designation noted above (listed in §220506(a)) or "any trademark, trade name, sign, symbol, or insignia falsely representing association with, or authorization by, the International Olympic Committee or ... [the United States Olympic Committee]" or any simulation of the words "Olympic," "Olympiad" or "Citius Altius Fortius" "tending to cause confusion, to cause mistake, to deceive, or to falsely suggest a connection with ... [the United States Olympic Committee] or any Olympic activity."

See U.S. Olympic Committee v. Toy Truck Lines Inc., 237 F.3d 1331, 57 USPQ2d 1380 (Fed. Cir. 2001); O-M Bread, Inc. v. U.S. Olympic Committee., 65 F.3d 933, 36 USPQ2d 1041(Fed. Cir. 1995); U.S. Olympic Committee v. Intelicense Corp., S.A., 737 F. 2d 263, 222 USPQ 766 (2d Cir. 1984), cert. denied 469 U.S. 982 (1984); U.S. Olympic Committee v. Union Sport Apparel, 220 USPQ 526 (E.D. Va. 1983); U.S. Olympic Committee v. International Federation of Body Builders, 219 USPQ 353 (D.D.C. 1982); Stop the Olympic Prison v. U.S. Olympic Committee, 489 F. Supp. 1112, 207 USPQ 237 (S.D.N.Y. 1980).

(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 Association v. Blinded American Veterans Foundation, 872 F.2d 1035, 10 USPQ2d 1432 (D.C. Cir. 1989).

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.

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 national symbol, institution or person specified in the statute (e.g., the United States Olympic Committee). See TMEP §1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203 et seq. 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. Cf. U.S. Olympic Committee v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497 (TTAB 1984) (opposition to the registration of OLYMP sustained on ground of likelihood of confusion with opposer's registered mark OLYMPIC under §2(d), the Board finding that the evidence of record did not show that OLYMP falsely suggests a connection with opposer under §2(a), and that the remedies provided in 36 U.S.C. §220506(c) for misuse of Olympic designations are not pertinent to opposition proceedings).

In some instances, it may be appropriate for the examining attorney to refuse registration pursuant to §§1, 2 (preamble) 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, should 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 should 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 as a trademark by the applicant may be prohibited by Article 6ter of the Paris Convention. See TMEP §1205.02.