PATRIOTIC BRANDING

As we celebrate the 245th anniversary of our nation’s founding, now it’s time to examine when national insignias, including flags, can be registered with the U.S. Patent and Trademark Office. Under Section 2 of the Trademark Act (15 U.S.C. §1052), Congress set forth its ‘five deadly sins’, also known as the ‘absolute bars to registration’. Among this ignoble quintet is subsection (b), in pertinent part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

So what does this mean for companies interested in capitalizing on our national heritage? If intending to perfect their rights through a federal trademark registration, they need to tread very carefully, to paraphrase the Gadsden flag of the American Revolution. Essentially, registration is available but only when complying with several specific requirements.

Turning now to Section 1204 of the Trademark Manual of Examining Procedure (TMEP) for further guidance, whether such national symbols are denied registration is essentially based on the following language and supporting case law:

The incorporation in a mark of individual or distorted features that are merely suggestive of flags, coats of arms, or other insignia does not bar registration under §2(b).

Finally, the TMEP provides several helpful examples of acceptable and unacceptable branding. First, are those where trademark registration has been denied for reasons of verisimilitude, irrespective of color claim:

Next are illustrative examples of such insignia that were approved for trademark registration by the USPTO. According to Section 1204.01(b) of the TMEP, registration may actually be granted if incomplete or stylized elements of flags are contained within the mark as follows:

If the flag design fits one of the following scenarios, the examining attorney should not refuse registration under §2(b):

The flag design is used to form a letter, number, or design.

The flag is substantially obscured by words or designs.

The design is not in a shape normally seen in flags.

The flag design appears in a color different from that normally used in the national flag.

A significant feature is missing or changed.

Of course, there’s one major caveat to the above. While flags of former countries are to be accepted by the USPTO, with apologies to one Ms. Ross, former flags of currently existing nations, such as the original U.S. flag of the thirteen colonies, will be denied trademark registration.

Similarly, federal law prohibits use of the Swiss Confederation coat of arms for any commercial purpose, including trademark use, under 18 U.S.C. §708 as follows:

Whoever, whether a corporation, partnership, unincorporated company, association, or person within the United States, willfully uses as a trade mark, commercial label, or portion thereof, or as an advertisement or insignia for any business or organization or for any trade or commercial purpose, the coat of arms of the Swiss Confederation, consisting of an upright white cross with equal arms and lines on a red ground, or any simulation thereof, shall be fined under this title or imprisoned not more than six months, or both. This section shall not make unlawful the use of any such design or insignia which was lawful on August 31, 1948.

In other words, if the mark was in use prior to the above date, then registration would be permitted. Likewise, as long as there's no other reference to Switzerland then a shield design that's depicted in colors other than red and white or lacking any specific color claim may also be granted registration. Finally, if the white cross on a red background is not shown in combination with a shield configuration, sometimes registration will be permitted as well.

Although some of this may seem a bit counterintuitive at first, once familiar with the basic concepts and carve-outs, business owners and brand managers alike should be able to successfully navigate this treacherous terrain, just like General George at Valley Forge back in 1778. Happy Birthday, America!

This post is also available on the GLG BLOG:

https://goldmanlawgroup.com/patriotic-branding-when-a-flag-is-not-a-flag/