Authored By Haviland Macy Marie Kebler, Esq. & Samantha Pendley
Few images are more iconic and recognizably American than Old Glory. But in a Trademark, using an iconic image like this might prevent you from being able to secure a Federal Registration. At least 2,800 Trademark Applications have been filed to date which are described as including a depiction of the American Flag, but only half of those Trademarks Applications have successfully made it through to Registration. Why is the success rate so low? There are certain icons and images that specifically cannot be trademarked. This is because the United States Patent and Trademark Office (“USPTO”) cannot give ownership to one individual for these kinds of images.
The Trademark Manual of Examining Procedures (“TMEP”), used by the USPTO Examining Attorneys to guide their review of and approval of Trademark Applications, has specific guidelines for Flags and Simulations of Flags. The Examining Attorneys are guided to consider the following factors: (1) color; (2) presentation of the mark; (3) words or other designs on the drawing; and (4) use of the mark on the specimen(s). TMEP § 1204.01(a).
For marks that use an American Flag, avoiding a Section 2(b) Refusal from the USPTO can be quite difficult. A Section 2(b) Refusal is a refusal to register a Trademark on the basis that is an attempt to remove a Flag, Coat of Arms, or other certain insignia of the United States, Municipality, or Foreign Nations from use by the general public and grant ownership to one person or entity. According to the TMEP, The following are circumstances in which a Flag related Mark should not be refused registration: (1) the flag design is used to form a letter, number, or design (2) the flag is substantially obscured by words or designs (3) the design is not in a shape normally seen in flags (4) the flag design appears in a color different from that normally used in the national flag; or (5) a significant feature is missing or changed. TMEP § 1204.01(b).
While the Flags and Simulations of Flags Refusal is seldom litigated, these proceedings can be interesting to review. For example, in July 2019, the Alabama Tourism Department (“Applicant”) appealed their Section 2(b) of the Lanham Act Refusal to the Trademark Trial and Appeal Board (“TTAB”). The TTAB’s role is to handle appeals involving Applications to register or appeals from expungement and reexamination. The Application’s Examining Attorney refused Registration on the grounds that the Mark included a simulation of the United States of America’s Flag. In re Alabama Tourism Department, Application Serial No. 87599292, (TTAB2020). Under Trademark Law, simulation of a flag refers to “something that gives the appearance or effect or has the characteristics of an original item.” 15 U.S.C. §1052. Briefs were filed by the Applicant and the Examining Attorney and ultimately the TTAB affirmed the Refusal and the Applicant’s Trademark was abandoned following the Ex Parte Appeal.
In Applicant’s Briefs, it asserted that the flag design in its Mark was missing significant features of the United States of America’s Flag, formed another design, was substantially obscured by other designs in the Mark, and was not in a shape normally seen in the Flag. However, the TTAB was not convinced and stated that the Mark failed to create a distinct commercial impression, other than as a simulation of the United States of America’s Flag and noting that their decision was not inconsistent with the registration of the third-party marks cited by Applicant. In re Alabama Tourism Department, Serial No. 87599292 (TTAB, May 6, 2020).
Because of this Proceeding and the rules surrounding use of the American Flag in Trademarks, Business Owners and Organizations should be aware of the Regulations that restrict Trademark Registration of Flags and may want to consider these before incorporating this iconic American image into their branding.
References:
TMEP § 1204.01(a)
TMEP § 1204.01(b)
15 U.S.C. §1052
In re Alabama Tourism Department, Serial No. 87599292 (TTAB, May 6, 2020).