TMEP 1205.01(d)(i)(A): When a Refusal Under Sections 1 and 45 Must Be Issued

October 2017 Edition of the TMEP

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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. §§1051, 1127, in support of the refusal and explain that the finding of unlawful use is based on 18 U.S.C. §708. See TMEP §1205.01. When issuing the refusal, the examining attorney should provide evidence showing the typical depiction of the Swiss coat of arms. See TMEP §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.