TMEP 1205.01(d)(ii)(A): When a Refusal Under Section 2(b) Must Be Issued

This is the October 2015 Edition of the TMEP

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1205.01(d)(ii)(A)    When a Refusal Under Section 2(b) Must Be Issued

The examining attorney must refuse registration under §2(b) if the mark contains an element composed of an upright equilateral cross on a square, a rectangle, or a triangular shield (or a simulation thereof) that is not significantly stylized, altered, or merged with other elements in the mark, and any of the following conditions exist:

  • the drawing shows the cross in white and the square, rectangle, or 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 square, rectangle, or triangular shield is red, or (ii) the specimen shows the cross and square, rectangle, or triangular shield in the prohibited color scheme; or
  • the drawing is not in color, but in addition to an upright equilateral cross on a square, a rectangle, or a triangular shield, the mark contains wording or other matter that creates or reinforces the impression that the cross and square/rectangle/shield design is the Swiss flag or Swiss coat of arms (e.g., “Switzerland,” “Swiss,” “Suisse,” “Schweiz,” “Swiss Confederation”).

For applications based on §1(a), the examining attorney must issue a requirement for additional information based on 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 square, a rectangle, or a triangular shield (or a simulation thereof) and all of the following conditions exist:

  • the drawing is not in color;
  • there is no color claim;
  • the mark description is omitted or does not reference color;
  • the mark does not contain wording or other matter that creates or reinforces the impression that the matter is the Swiss flag or Swiss coat of arms (e.g., “Switzerland,” “Swiss,” “Suisse,” “Schweiz,” “Swiss Confederation”); and
  • 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).

The requirement for additional information should advise that registration of the Swiss coat of arms or Swiss flag in the white-and-red color scheme is barred under Trademark Act §2(b) and require the applicant to provide either a color version of the specimen of record or a statement that the relevant matter 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 relevant matter is displayed in colors other than white and red, a refusal under §2(b) should not be issued. The statement that the relevant matter, as used in the specimen of record, does not appear in the prohibited color scheme may be submitted in a response to an Office action or may be 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.

When issuing the §2(b) refusal, the examining attorney must provide evidence supporting the conclusion that the matter in the mark is the official coat of arms or flag of the Swiss Confederation. See, e.g., Swiss Fed. Inst. of Intellectual Prop., Frequently Asked Questions – Legislative Amendment “Swissness,” https://www.ige.ch/en/service/frequently-asked-questions/legislative-amendment-swissness/a-swiss-cross-and-the-swiss-coat-of-arms.html (accessed Aug. 15, 2012) (indicating that “[t]he Swiss cross is a perpendicular, free-standing, white cross, each arm of which is one-sixth longer than it is wide on a red background” and that “[t]he Swiss coat of arms is a Swiss cross in a triangular shield”); Britannica.com, Switzerland, flag of, http://www.britannica.com/EBchecked/topic/1355532/Switzerland-flag-of/ (accessed Aug. 15, 2012); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/library/publications/the-world-factbook/geos/sz.html (accessed Aug. 15, 2012). In addition, if the refusal is based on the examining attorney’s conclusion that other wording or matter in the mark creates or reinforces the impression that the cross and square/rectangle/shield design is the Swiss flag or Swiss coat of arms, the examining attorney should provide evidence to support that conclusion.

When an examining attorney issues a §2(b) refusal because the mark features a cross-and-shield design that appears in, or is used in, the prohibited color scheme, the examining attorney must also issue a “not in lawful use” refusal under Trademark Act §§1 and 45. See TMEP §1205.01(c)(i). Sometimes, however, a §2(b) refusal will be issued not because information in the application indicates that the cross-and-shield design appears in, or is used in, the prohibited color scheme, but because other Swiss indicia in the mark would lead to the impression that a non-color cross-and-shield design is the Swiss coat of arms. In these instances, a refusal under §§1 and 45 is not appropriate unless there is extrinsic evidence that, as used by the applicant, the coat of arms in the mark appears in the prohibited color scheme.