1205.01(d)(i) Refusal Under Sections 1 and 45: Swiss Coat of Arms Not in Lawful Use
Federal law prohibits anyone from using the Swiss Confederation coat of arms as a trademark or for any other commercial purpose. Specifically, the text of 18 U.S.C. §708 reads as follows:
Whoever, whether a corporation, partnership, unincorporated company, association, or person within the United States, willfully uses as a trade mark, commercial label, or portion thereof, or as an advertisement or insignia for any business or organization or for any trade or commercial purpose, the coat of arms of the Swiss Confederation, consisting of an upright white cross with equal arms and lines on a red ground, or any simulation thereof, shall be fined under this title or imprisoned not more than six months, or both. This section shall not make unlawful the use of any such design or insignia which was lawful on August 31, 1948.
The statute describes the coat of arms as "an upright white cross with equal arms and lines on a red ground." 18 U.S.C. §708. Although the Swiss flag features this same type of white cross, the statute refers to the "coat of arms" and therefore is applied only to the Swiss coat of arms, which consists of a white equilateral cross displayed upright on a red triangular shield.
The text of 18 U.S.C. §708 does not specify any authorized users of the Swiss coat of arms. Accordingly, no one may lawfully use the coat of arms as a trademark or service mark in the United States, unless the mark was in use on or before August 31, 1948. See18 U.S.C. §708. Thus, regardless of the identity of the applicant, any mark containing the Swiss coat of arms, or a simulation thereof, which was not in use on or before that date, must be refused under §§1 and 45 because the mark is not in lawful use in commerce.
Although applications based on §1(b), §44, or §66(a) need not initially show actual use of the mark in commerce, applicants filing under these bases must have a bona fide intent to use the mark in commerce. See TMEP §§1008, 1009, 1101, 1102, 1904.01(c), 1904.01(d). Because "use in commerce" under the Trademark Act means "lawful use in commerce," any intended use of the mark serving as the basis for these types of applications must also be lawful. See John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010); In re Midwest Tennis & Track Co., 29 USPQ2d at 1386 n.2 (TTAB 1993); Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982); In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007) ("It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful.... [W]e also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.") (citations omitted). With respect to a mark containing the Swiss coat of arms, actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce. John W. Carson Found., 94 USPQ2d at 1948. Therefore, it is appropriate to issue a refusal under §§1 and 45 for applications based on §1(b), §44, or §66(a) if the facts and available evidence support the conclusion that the mark contains the Swiss coat of arms or a simulation thereof.
To properly support a refusal under §§1 and 45, based on a finding that the mark is not, or cannot be, in lawful use in commerce, there must be some indication that the mark features the Swiss coat of arms or a simulation thereof. A "simulation" refers to "something that gives the appearance or effect or has the characteristics of an original item." In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973) (citing Webster’s Third New Int’l Dictionary (unabridged ed. 1965)); see TMEP §1204. Whether particular matter is a simulation of the Swiss coat of arms is determined by a visual comparison of the matter and the coat of arms. Id.
The application record usually contains sufficient information to establish that the mark contains the Swiss coat of arms or a simulation thereof. For example, the drawing may show a white cross on a red triangular shield. Or, if the drawing is not in color, the specimen, color claim, or color description may indicate that these elements appear in the prohibited color scheme.
Even if the application record itself does not provide evidence of unlawful use, it may be appropriate in some instances to base a refusal under §§1 and 45 on extrinsic evidence of applicant’s use of the mark. Examining attorneys are not required to search for extrinsic evidence. However, if the examining attorney locates relevant extrinsic evidence in the course of examining the mark, that evidence may be used to support the refusal.