1205.01(d)(i)(D) Applicant’s Response to Refusal
If a mark is unregistrable under §§1 and 45 because it contains the Swiss coat of arms, disclaiming the coat of arms will not make it registrable, nor will claiming acquired distinctiveness under Trademark Act §2(f) or amending the application to the Supplemental Register. Cf. TMEP §§1204.04(a) and 1205.01(a)(v). In addition, an applicant may not overcome the refusal under §§1 and 45 by disclaiming the colors that appear in the coat of arms. If registration is refused because the drawing or specimen actually shows the cross-and-shield element in white and red, the applicant may not overcome the refusal by merely providing a statement that the mark will not be used in the prohibited colors. (If the drawing contains a black-and-white depiction of the Swiss coat of arms, and the applicant provides a statement that the mark does not, or will not, appear in the colors white and red, the statement will remain in the application record but will not be printed on any registration certificate that may issue.)
For applications based on §1, applicants may overcome the refusal as follows:
- Amending the Colors in the Drawing. If the mark is refused because the drawing shows the cross-and-shield element in the prohibited color scheme, a §1 applicant may overcome the refusal by submitting an amended drawing showing the cross-and-shield element in a different, non-prohibited color scheme, or by submitting a non-color version of the drawing (i.e., a black-and-white or gray scale drawing). Under these circumstances, these amendments to the drawing usually will not be considered a material alteration of the mark. Cf. TMEP §1205.01(a)(v). The color claim and color description must also be amended or deleted, as appropriate. If the application is based on §1(a), the record must contain an acceptable matching specimen. Black-and-white or gray scale reproductions of specimens are not acceptable for this purpose; a color version of the specimen must be submitted.
- Amending the Color Claim/Description; Substitute Specimen. If the drawing is not in color, but registration is refused because the color claim or mark description indicates that the cross-and-shield element appears in white and red, a §1 applicant may overcome the refusal by amending the color claim or mark description to delete any reference to color. Likewise, if the original drawing is not in color, but registration was refused because the specimen showed the cross-and-shield element in the prohibited color scheme, the applicant may obviate the refusal by submitting a color specimen showing use of the mark in colors other than white and red.
- Deleting the Coat of Arms from the Drawing. A §1 applicant may also overcome the refusal by deleting the coat of arms from the mark if the coat of arms is separable from the other elements in the mark and the remaining matter is registrable. Cf. TMEP §1204.04(b). Generally, the deletion of this matter will not be considered a material alteration of the mark. Furthermore, if the coat of arms is deleted from the drawing, any specimen showing the mark with the deleted matter should still be considered to match the drawing. Cf. TMEP §1204.04(b).
For applications based on §44 or §66(a), applicants generally may not make amendments to the mark. Therefore, the option to delete the Swiss coat of arms is not available in these types of applications. 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§807.12(b), 1011.01, 1904.02(j). However, if the mark in a §44 or §66(a) application is refused because the drawing presents the cross-and-shield element in the prohibited color scheme, but there is no corresponding color claim in the foreign or international registration, the applicant may overcome the refusal under §§1 and 45 by submitting a statement that no claim of color is made with respect to the foreign or international registration and amending the drawing to a black-and-white reproduction of the mark. See TMEP §§1011.01, 1904.02(k). In addition, the applicant must submit a statement confirming applicant’s bona fide intent to use the mark lawfully (i.e., in colors other than white and red). This statement does not need to be verified.