TMEP 1205.01(d)(iv): Examples

This is the October 2015 Edition of the TMEP

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1205.01(d)(iv)    Examples

Examples of Situations Where Registration Must (or Might) Be Refused. In some of the following examples, a refusal under §§1 and 45, §2(b), or both must be issued because the drawing itself shows that the mark contains the Swiss coat of arms, the Swiss flag, or a simulation thereof. In the remaining examples, other information will dictate whether either or both refusals are appropriate.

Description: A mark consisting of a red shield with a white cross in the middle, with a set of yellow wheat on the left and right side of the shield; a blue banner at the bottom of the shield with white lettering that reads the words Swiss Oven in the banner; and black shading at the bottom of the blue banner.

Mark: The mark consists of the wording SWISS OVEN appearing on a banner that is positioned over a red triangular shield containing a white cross, with depictions of wheat appearing on both sides of the shield

Analysis: The mark contains a red triangular shield containing a white equilateral cross. The shield is partially obscured and the cross is proportionally larger than the cross in the Swiss coat of arms. Nonetheless, this matter is essentially a simulation of the Swiss coat of arms (regardless of the wording in the mark). Thus, refusals under §§1 and 45 and §2(b) must be issued.

Description: A mark consisting of the words ZURICH and SWISS in the color black, appearing below a red square containing a white cross.

Mark: The mark consists of the wording ZURICH SWISS appearing below a red square containing a white equilateral cross.

Analysis: The mark contains the Swiss flag: a white equilateral cross on a red square. Therefore, the mark must be refused under §2(b). The wording in the mark reinforces the impression that the matter is the Swiss flag and further supports the §2(b) refusal. A refusal under §§1 and 45 is not appropriate, because this refusal applies only to the Swiss coat of arms. See TMEP §1205.01(d)(iii) regarding this mark’s geographic significance.

Description: A mark consisting of the wording "THE SWISS PREMIUM BAKERY SINCE 1934" appearing in between a double oval design with a wheat stalk located to the left and right of the wording "SINCE 1934." A stylized letter "B" appears in the center of the inner oval with a design of triangular shield bearing an upright equilateral cross in the middle of the shield.

Mark: The mark consists of an oval carrier featuring, among other things, a triangular shield containing an upright equilateral cross. Color is not claimed as a feature of the mark.

Analysis: A §2(b) refusal must be issued because, although the shield-and-cross element is not shown in color and is slightly different from the actual Swiss coat of arms, other Swiss indicia in the mark create the impression that the design is the Swiss coat of arms. A refusal under §§1 and 45 should not be issued based on the drawing alone, because the drawing does not show the relevant matter in a white-and-red color scheme. If, however, the specimen of use or extrinsic evidence shows that the cross-and-shield element is used in the prohibited color scheme, a refusal under §§1 and 45 would be appropriate. Otherwise, an advisory or a Rule 2.61(b) requirement for additional information may be appropriate,

Description: A mark in gray scale consisting of a circle featuring a triangular shield containing an equilateral cros, as well as a depiction of a mountain and the wording SWISS GRILL and SWISS GOURMET FOOD.

Mark: The mark consists of a circular carrier containing a depiction of a mountain, a triangular shield containing an upright equilateral cross, and the wording SWISS GRILL and SWISS GOURMET FOOD. Color is not claimed as a feature of the mark.

Analysis: A §2(b) refusal must be issued in this case because, although the cross-and-shield element is not shown in color, other Swiss indicia in the mark will create the impression that the design is the Swiss coat of arms. A refusal under §§1 and 45 should not be issued based on the drawing alone, because the drawing does not show the relevant matter in a white-and-red color scheme. If, however, the specimen of record or extrinsic evidence shows that the cross-and-shield element is used in the prohibited color scheme, a refusal under §§1 and 45 would be appropriate. Otherwise, an advisory or a Rule 2.61(b) requirement for additional information may be appropriate.

Description: A mark consisting of a rectangle containing an equilateral cross and the wording ADVANCED DERMATOLOGIC SOLUTIONS, LLC.

Mark: The mark consists of the wording ADVANCED DERMATOLOGIC SOLUTIONS, LLC appearing above a rectangle containing an upright equilateral cross. Color is not claimed as a feature of the mark.

Analysis: A §2(b) refusal is appropriate if the color claim, mark description, or specimen of record indicates that the cross appears in white and the rectangle appears in red. A refusal under §§1 and 45 would not be appropriate, regardless of the colors these elements appear in, because this refusal applies only to the Swiss coat of arms. Otherwise, an advisory or a Rule 2.61(b) requirement for additional information may be appropriate.

Description: A mark consisting of a white equilateral cross and the wording ANDREW CHRISTIAN in white, all centered within a red background.

Mark: The mark consists of a red background containing a white cross above the wording ANDREW CHRISTIAN, which is also in white.

Analysis: The red portion of the mark represents a red background, but not necessarily a red rectangular background. If the specimen of record shows the mark in a rectangular form, then the mark is essentially a simulation of the Swiss flag and a §2(b) refusal is appropriate. The inclusion of the wording immediately below the cross would not detract from this impression. A refusal under §§1 and 45 is not appropriate because this refusal applies only to the Swiss coat of arms.

Description: A mark consisting of a rectangle containing a white cross within a red square, as well as the wording REMOTE MEDICAL INTL.

Mark: The mark consists of a rectangle containing a white equilateral cross on a red square, all of which is bordered in black, and the wording REMOTE MEDICAL INTL.

Analysis: Because it is bordered in black, the cross-and-square element in the mark is slightly different from Swiss flag. However, it is sufficiently similar to be considered a simulation of the Swiss flag. Thus, a §2(b) refusal is appropriate. A refusal under §§1 and 45 is not appropriate because this refusal applies only to the Swiss coat of arms.

Examples of Situations Where Refusal of Registration Is Not Appropriate. In the following examples, a refusal under §§1 and 45 or §2(b) is not appropriate for one or more of the following reasons: (1) the mark is displayed in a color scheme other than white and red; (2) the mark does not contain all of the characteristic elements of the Swiss coat of arms or the Swiss flag; or (3) the relevant matter in the mark is sufficiently altered, or merged with other design elements, to create a distinct commercial impression.

Description: Mark consisting of a shield device, the word "McCormack" and the design of an upright equilateral cross displayed in silver and white.

Mark: The mark consists of the word MCCORMACK in silver appearing above a white cross on a silver triangular background, all within a silver shield-shaped outline.

Analysis: Although the mark contains an upright equilateral cross on a triangular background, a refusal under §§1 and 45 is not appropriate because the relevant elements are not displayed in white and red. A refusal under §2(b) is not appropriate because the drawing and color claim indicate that the cross-and-shield design appear in the colors silver and white.

Description: The mark consists of the letters "PR" in blue block type followed by a red circle with a white cross therein representing the letter "O" followed by the letters "CARE" in blue block type.

Mark: The mark consists of the word PROCARE, with the letters "PR" and “CARE” in blue and the letter "O" formed by a red circle containing a white cross.

Analysis: Although the mark features a design element composed of a white equilateral cross on a red background, a refusal under §§1 and 45 is not appropriate because the background shape is not a triangular shield. A §2(b) refusal is not appropriate because the relevant matter does not appear in the shape of the Swiss flag or Swiss coat of arms.

Description: A mark consisting of a red silhouette of a house containing a white equilateral cross.

Mark: The mark consists of a red silhouette of a house containing a white equilateral cross.

Analysis: Although the mark contains an upright equilateral cross in white on a red background, this matter is integrated into a stylized silhouette of a house. As a result, the mark creates an impression of something entirely different from the Swiss flag or the Swiss coat of arms. Thus, a refusal under §§1 and 45 or §2(b) would not be appropriate.

Description: A mark consisting of the wording REPEL and ANTIMICROBIAL PROTECTED and a triangular shield containing an upright equilateral cross.

Mark: The mark consists of a triangular shield containing an upright equilateral cross, appearing below the word REPEL and to the left of the wording ANTIMICROBIAL PROTECTED. The colors black, white, and gray are claimed as a feature of the mark.

Analysis: Although the mark contains an upright equilateral cross on a triangular shield, refusals under §§1 and 45 and §2(b) are not appropriate, because the drawing and color claim indicate that the cross-and-shield design appear in the colors black, white, and gray. These refusals should not issue, even if the specimen shows use of the cross-and-shield in the prohibited white-and-red color scheme. Instead, to address the discrepancy between the drawing and the specimen, the examining attorney must require a matching specimen that necessarily would not include the prohibited color scheme.