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. See TMEP §807.14(a).
The examining attorney may also permit an amendment from a color drawing to a black-and-white drawing, to eliminate the claim of the color red, if such an amendment would not constitute a material alteration of the mark, and the amendment is supported by a proper specimen. See TMEP §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks, and TMEP §1205.01(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.