1204    Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation

Section 2(b) of the Trademark Act, 15 U.S.C. §1052(b),  bars the registration on either the Principal Register or the Supplemental Register of marks that consist of or comprise (whether consisting solely of, or having incorporated in them) the flag, coat of arms, or other insignia of the United States, of any state or municipality of the United States, or of any foreign nation. See Ceccato v. Manifattura Lane Gaetano Marzotto & Figli, S.p.A., 32 USPQ2d 1192, 1196 (TTAB 1994) (noting that "it would appear that the reference to ‘municipality’ in the Statute is to a municipality in the United States, and that prohibition of registration with respect to foreign coats of arms, etc., is to those of the countries themselves, rather than to those of the states or municipalities of the foreign countries"). Moreover, registration of all such official insignia is barred regardless of the identity of the applicant, that is, the statutory prohibition allows no exception even when the applicant is a government entity seeking to register its own flag, coat of arms, or other insignia. See In re City of Hous., 731 F.3d 1326, 1331, 108 USPQ2d 1226, 1229 (Fed. Cir. 2013); In re Cnty. of Orange, 2022 USPQ2d 733, at *18-25 (TTAB 2022), appeal docketed, No. 23-1004 (Fed. Cir. Oct. 4, 2022).

Section 2(b) also bars the registration of marks that consist of or comprise any simulation of such symbols. "Simulation" refers to "something that gives the appearance or effect or has the characteristics of an original item." In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *2 (TTAB 2020) (quoting In re Fam. Emergency Room LLC, 121 USPQ2d 1886, 1887 (TTAB 2017)); In re Advance Indus. Sec., Inc., 194 USPQ 344, 346 (TTAB 1977). Whether a mark comprises a simulation must be determined from a visual comparison of the proposed mark vis-à-vis replicas of the flag, coat of arms, or other insignia in question. In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *2 (quoting In re Fam. Emergency Room LLC, 121 USPQ2d at 1887); In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973) . The focus is on the general recollection of the flag or insignia by purchasers, "without a careful analysis and side-by-side comparison." In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *2 (quoting In re Fam. Emergency Room LLC, 121 USPQ2d at 1888); In re Advance Indus. Sec., 194 USPQ at 346 .

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). See Knorr-Nahrmittel A.G. v. Havland Int’l, Inc., 206 USPQ 827, 833 (TTAB 1980) (holding flag designs incorporated in the proposed mark NOR-KING and design not recognizable as the flags of Denmark, Norway, and Sweden, the Board finding that "[a]ll that the record reflects is that the mark contains a representation of certain flags, but not the flag or flags of any particular nation"); In re Advance Indus. Sec., 194 USPQ at 346 (finding proposed mark comprising a gold and brown triangular shield design with the words "ADVANCE SECURITY" predominately displayed in the upper central portion of the mark "creates an overall commercial impression distinctly different from the Coat of Arms"); In re Waltham Watch Co., 179 USPQ at 60 (finding mark comprising wording with the design of a globe and flags not to be a simulation of the flags of Switzerland and Great Britain, stating that "although the flags depicted in applicant’s mark incorporate common elements of flag designs such as horizontal or vertical lines, crosses or stars, they are readily distinguishable from any of the flags of the nations alluded to by the examiner."). Thus, marks with elements of flags in a stylized or incomplete form are generally not refused under §2(b). In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *2 (quoting In re Fam. Emergency Room LLC, 121 USPQ2d at 1888); In re Advance Indus. Sec., 194 USPQ at 346.

Section 2(b) differs from the provision of §2(a) regarding national symbols (see TMEP §1203.03(a)(iii)) in that §2(b) requires no additional element, such as a false suggestion of a connection, to preclude registration.

1204.01    Flags and Simulations of Flags

1204.01(a)    Flags and Simulations of Flags Are Refused

Registration must be refused under §2(b) if the design sought to be registered includes a true representation of the flag of the United States, any state, municipality, or foreign nation, or is a simulation thereof. A refusal must be issued "if the design would be perceived by the public as a flag, regardless of whether other matter appears with or on the flag." In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *2 (TTAB 2020) (quoting In re Fam. Emergency Room LLC, 121 USPQ2d 1886, 1887-88 (TTAB 2017)). The examining attorney should consider the following factors, in regard to both color drawings and black-and-white drawings, to determine whether the design is perceived as a flag: "(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)." In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *2 (quoting TMEP §1204.01(a)) (affirming the standards set forth in this section).

Generally, an examining attorney should issue a refusal if a black-and-white drawing contains unmistakable features of the flag, contains features of the flag along with indicia of a nation, or is shown on the specimen in the appropriate colors of that national flag. For example, merely amending a "red, white, and blue" American flag to a black-and-white American flag will not overcome a §2(b) refusal. However, black-and-white drawings of flags that consist only of common geometric shapes should not be refused unless there are other indicia of the country on the drawing or on the specimens. For example, a black-and-white drawing showing three horizontal rectangles would not be refused as the Italian or French flag unless there is something else on the drawing or on the specimen that supports the refusal.

Examples of Situations Where Registration Should Be Refused. The following are examples of situations where registration should be refused, because all significant features of the flag are present or a simulation of the flag is used with state or national indicia:

The wording "That’s Italian" emphasizes that the banner design is a simulation of a flag.

This design is refused because the word SWISS emphasizes that the design is intended to be a simulation of the Swiss flag.

This black-and-white mark is refused because the word Texas emphasizes that the design is intended to be the state flag of Texas.

See TMEP §§1205.01(d)-(d)(iii) regarding procedures for marks containing the Swiss Confederation coat of arms or flag.

1204.01(b)    Stylized Flag Designs Are Not Refused Under §2(b)

Marks containing elements of flags in a stylized or incomplete form are not refused under §2(b). The mere presence of some significant elements of flags, such as stars and stripes (U.S. flag) or a maple leaf (Canadian flag), does not necessarily warrant a refusal.

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.

In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *2 (TTAB 2020) (quoting TMEP §1204.01(b)) (affirming the standards set forth in this section).

Examples. The following are examples of stylized designs that are registrable under §2(b):

Flag Forms Another Design, Number, or Letter - No §2(b) Refusal

Flag Is Substantially Obscured By Other Matter - No §2(b) Refusal

Flag Design Is Not In the Normal Flag Shape - No §2(b) Refusal

Significant Feature of the Flag Is In a Different Color - No §2(b) Refusal

NOTE: Stripes in flag are red, white, and green.

Significant Feature Is Changed - No §2(b) Refusal

1204.01(c)    Case Law Finding No Simulation of a Flag

In certain cases, the Trademark Trial and Appeal Board found that the flag design was not a simulation of a particular national flag. In re Am. Red Magen David for Israel, 222 USPQ 266, 267 (TTAB 1984) ("As to the State of Israel, it is noted that the flag of that nation consists essentially of a light blue Star of David on a white background. In the absence of any evidence that the State of Israel is identified by a six-pointed star in any other color, we conclude that only a light blue six-pointed star would be recognized as the insignia thereof."); In re Health Maint. Orgs., Inc., 188 USPQ 473 (TTAB 1975) (holding dark cross, with legs of equal length, having a caduceus symmetrically imposed thereon sufficiently distinctive from Greek red cross and flag of Swiss Confederation).

1204.01(d)    Description of the Mark

The description of the mark should make it clear that the design is a stylized version of the national flag, if accurate. For example, a statement that "the mark consists of the stylized American flag" or "the mark consists of the stylized American flag in the shape of the letters USA" are acceptable descriptions.

1204.01(e)    Flags Not Presently Used as National Flags

Flags of former countries, states, or municipalities are not refused under §2(b). For example, the flags of now non-existent countries such as the German Democratic Republic (East Germany) or Yugoslavia are not refused. However, former flags of existing countries, states, or municipalities are refused under §2(b). For example, the original flag of the United States representing the 13 colonies should be refused.

1204.02    Government Insignia

1204.02(a)    Designs that are Insignia Under §2(b) Must Be Refused

Flags and coats of arms are specific designs formally adopted to serve as emblems of governmental authority. The wording "other insignia" should not be interpreted broadly, but should be considered to include only those emblems and devices that also represent governmental authority and that are of the same general class and character as flags and coats of arms.

The following are insignia of the United States for purposes of §2(b):

• Great Seal of the United States
• Presidential Seal
• Seals of Government Agencies

The Trademark Trial and Appeal Board has construed the statutory language as follows:

[T]he wording "or other insignia of the United States" must be restricted in its application to insignia of the same general class as "the flag or coats of arms" of the United States. Since both the flag and coat or [sic] arms are emblems of national authority it seems evident that other insignia of national authority such as the Great Seal of the United States, the Presidential Seal, and seals of government departments would be equally prohibited registration under Section 2(b). On the other hand, it appears equally evident that department insignia which are merely used to identify a service or facility of the Government are not insignia of national authority and that they therefore do not fall within the general prohibitions of this section of the Statute.

In re U.S. Dep't of the Interior, 142 USPQ 506, 507 (TTAB 1964) (finding logo comprising the words "NATIONAL PARK SERVICE" and "Department of the Interior," with depiction of trees, mountains, and a buffalo, surrounded by an arrowhead design, not to be an insignia of the United States). The Trademark Trial and Appeal Board reaffirmed this interpretation in In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009), by affirming the §2(b) refusal since applicant’s seal design was virtually identical to the seal used by the United States Department of the Treasury.

1204.02(b)    Examples of Insignia That Should Be Refused Under §2(b)

Examples: The following are examples of insignia that should be refused under §2(b):

Great Seal of the United States 

Seal of The President of The United States 

The Official Seal of a Government Agency 

1204.02(c)    Examples of Designs That Should Not Be Refused Under §2(b)

Designs that do not rise to the level of being emblems of national authority, or emblems of state or municipal authority, should not be refused. Exception: As a result of the enactment of Public Law 98 525  on October 19, 1984, the initials, seal, and emblem of the United States Marine Corps are "deemed to be insignia of the United States," under 10 U.S.C. §7881. The amendments adding this section do not affect rights that vested before October 19, 1984. Applications claiming use after October 19, 1984 must be refused.

The following are examples of designs that are not barred from registration under §2(b):

Designs That Identify Governmental Departments - No §2(b) Refusal

Monuments, Statues, Buildings - No §2(b) Refusal

Objects Used By The Government - No §2(b) Refusal

Words or Initials that Identify People or Departments in The Government - No §2(b) Refusal

• U.S. Park Ranger
• U.S. Department of Transportation
• DOD - Department of Defense

1204.02(d)    Case Law Interpreting Insignia Under §2(b)

The following cases provide examples of matter that was held not to be government insignia under §2(b):

• (1) Department insignia that shows a service or facility of a federal department are not refused registration under §2(b). See In re United States Dep't of the Interior, 142 USPQ 506, 507 (TTAB 1964) (finding insignia of the National Park Service registrable).
• (2) Monuments, statues, or buildings associated with the United States such as the White House, Washington Monument, and Statue of Liberty, are not refused registration under §2(b). See Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960) ("That the Statue of Liberty is not a part of the ‘insignia of the United States’ is too clear to require discussion.").
• (3) Designs of objects used by the U.S. government are not refused registration under §2(b). See In re Brumberger Co., Inc., 200 USPQ 475 (TTAB 1978) (finding representation of the U.S. mailbox was not to be an insignia of the United States. However, the Board affirmed a refusal to register the mark under §2(a) because of a false connection with the United States Postal Service).
• (4) Initials or words that identify people or departments of a government agency. Letters that merely identify people and things associated with a particular agency or department of the United States government, instead of representing the authority of the government or the nation as a whole, are generally not considered to be "insignia of the United States" within the meaning of §2(b). See U.S. Navy v. United States Mfg. Co., 2 USPQ2d 1254 (TTAB 1987) (finding USMC, the initials of the Marine Corps, which is part of the Navy, which itself is within the Department of Defense, cannot be construed as an "other insignia of the United States" under §2(b) of the Lanham Act). Note: As a result of the enactment of Public Law 98 525 on October 19, 1984, the initials, seal, and emblem of the United States Marine Corps are "deemed to be insignia of the United States," under 10 U.S.C. §7881, pertaining to unauthorized use of Marine Corps insignia. However, "USMC" was not so protected when the applicant began using its stylized version of those letters as a mark. In view of the provision in Public Law 98-525 that the amendments adding Chapter 663 (10 U.S.C. §7881)  shall not affect rights that vested before the date of its enactment, the majority of the Board found that enactment of the law did not adversely affect the mark’s registrability, stating that "opposer has not shown that applicant’s mark was an insignia of the United States prior to the law making it one, or that the law effectively bars registration to applicant." Id. at 1260.

1204.03    Other Refusals May be Appropriate

Marks that are not barred by §2(b) may be refused if prohibited by other sections of the Trademark Act. For example, a design may not be an insignia under §2(b) but may be refused under §2(a). See, e.g., In re Brumberger Co., Inc., 200 USPQ 475 (TTAB 1978) (finding representation of the U.S. mailbox was not an insignia under §2(b) but was properly refused under §2(a) because it falsely suggested a connection with the United States Postal Service). Likewise, §2(d) may be a bar to registering a stylized flag that is not prohibited under §2(b).

See also TMEP §1205.01 and TMEP Appendix C  regarding subject matter that is protected by statute.

1204.04    Responding to §2(b) Refusal

1204.04(a)    Absolute Bar to Registration

Because §2(b) provides an absolute bar to registration, a disclaimer of the prohibited flag or insignia or an amendment to seek registration under §2(f) or on the Supplemental Register will not overcome a refusal.

The statute does not list any exceptions that would allow for countries, states, or municipalities to register their own flags or insignia. Applications for marks that contain flags, coats of arms, or government insignia, even if filed by the relevant state, country, or municipality, must be refused.

1204.04(b)    Deletion of §2(b) Matter

Section 1 Applications. The deletion of the unregistrable §2(b) matter, which no party can have trademark rights in, will not be considered a material alteration if the matter is separable from the other elements in the mark, e.g. , if the flag design is spatially separated from other matter in the mark or is used as a background for other words or designs. If the flag is deleted from the drawing, the specimen that shows the flag is still acceptable. The examining attorney must ensure that the design search codes are corrected whenever a change is made to the drawing.

No deletion is allowed if the flag design is integrated into the overall mark in such a way that deletion would significantly change the commercial impression of the mark.

An amendment to the drawing showing the outline of the flag design absent the interior material is not permitted. Amending the mark from a national, state, or municipal flag to a blank flag changes the commercial impression of how the mark is used, or intended to be used, in commerce.

Section 44 Applications. Amendments to the drawing to delete §2(b) matter are not permitted because the drawing must be a substantially exact representation of the mark as registered in the foreign country. TMEP §1011.01.

Section 66(a) Applications. Amendments to the drawing to delete the §2(b) matter are not permitted because the Madrid Protocol does not permit the amendment of a mark in an international registration. TMEP §807.13(b).

1204.04(b)(i)    Examples of Matter That May and May Not Be Deleted

The Flag Design May Be Deleted If It Is A Separable Element:

The Flag May Not Be Deleted If It Is Integrated Into the Overall Design:

1204.05    Resources

Internet Evidence

Many useful websites present images of national and state flags, government insignia, and coats of arms:

Flags of Foreign Nations:

• https://www.crwflags.com/fotw/flags/ 
• https://en.wikipedia.org/wiki/Gallery_of_sovereign_state_flags 

United States, State, and Territory Flags:

• https://en.wikipedia.org/wiki/Flags_of_the_U.S._states_and_territories 
• https://statesymbolsusa.org/categories/state-flag 

Insignia:

• Great Seal of the United States http://www.greatseal.com  /
• Seal of the President of the United States https://en.wikipedia.org/wiki/Seal_of_the_President_of_the_United_States 
• Seals of Government departments - see specific agency website

Coat of Arms - Gallery of Coats of Arms:

• https://en.wikipedia.org/wiki/Coat_of_arms 

Non Registration Data: X-Search and TESS

The "89" series code (i.e., serial numbers beginning with the digits "89") includes designations protected by federal statute or regulation, designations submitted to the USPTO from the IB pursuant to Article 6ter of the Paris Convention, and official insignia of federally and state-recognized Native American tribes. These submissions are sometimes referred to as "non-registrations." See TMEP §§1205.01─1205.03.

1205    Refusal on Basis of Matter Protected by Statute or Convention

1205.01    Statutory Protection

Various federal statutes and regulations prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and characters adopted by the United States government, including any agency or instrumentality thereof, or particular national and international organizations. These designations are reserved for the specific purposes prescribed in the relevant statute and must be free for use in the prescribed manner. See Appendix C  for a nonexhaustive list of United States statutes protecting designations of certain government agencies and instrumentalities.

For example, Congress has created statutes that grant exclusive rights to use certain designations to federally created private corporations and organizations. Violation of some of these statutes may be a criminal offense, e.g., 18 U.S.C. §§705  (regarding badges, medals, emblems, or other insignia of veterans’ organizations); 707 (4-H Club); 711 ("Smokey Bear"); and 711a ("Woodsy Owl" and slogan, "Give a Hoot, Don’t Pollute"). Other statutes provide for civil enforcement, e.g., 36 U.S.C. §§153104  (National Society of the Daughters of the American Revolution); 30905 (Boy Scouts); 80305 (Girl Scouts); 130506 (Little League); and 21904 (The American National Theater and Academy).

If the USPTO is made aware of a federal statute or regulation that prohibits or restricts the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and characters, they are entered into the USPTO search records to assist USPTO examining attorneys. These designations are assigned a serial number in the "89" series code (i.e., serial numbers beginning with the digits "89," sometimes referred to as "non-registrations"). Information about the statutory restriction should be discovered in an examining attorney’s search and a copy of the statutory language may be in the search record.

The following are examples of the protection of words and symbols by statute:

• (1) The Copyright Act of 1976 includes provisions regarding the use of appropriate notices of copyright. 17 U.S.C. §§101-1332.  These include provisions concerning the use of the letter "C" in a circle – ©, the word "Copyright" and the abbreviation "Copr." to identify visually perceptible copies (17 U.S.C. §401);  the use of the letter "P" in a circle to indicate phonorecords of sound recordings (17 U.S.C. §402);  and the use of the words "mask work," the symbol *M* and the letter "M" in a circle to designate mask works (17 U.S.C. §909).  The Copyright Act designates these symbols to indicate that the user of the symbol is asserting specific statutory rights.
• (2) Red Cross Emblem or the designations "Red Cross" and "Geneva Cross": Under 18 U.S.C. §706, the use of the Red Cross emblem as well as the designations "Red Cross" and "Geneva Cross," or any imitation thereof, is prohibited except by the American National Red Cross, and by sanitary and hospital authorities of the armed forces of the United States. The statute carves out an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before June 25, 1948. See In re Health Maint. Orgs., Inc., 188 USPQ 473 (TTAB 1975) (holding mark comprising a dark cross with legs of equal length on which a caduceus is symmetrically imposed (representation of caduceus disclaimed) registrable, the Board finding the mark readily distinguishable from the Greek red cross (on white background) and the Swiss confederation coat of arms (white cross on red background)). See TMEP §§1205.01(c)–1205.01(c)(iv) for further information.
• (3) False advertising or misuse of names to indicate a federal agency is proscribed by 18 U.S.C. §709.  For example, this provision prohibits knowing use, without written permission of the Director of the Federal Bureau of Investigation, of the words "Federal Bureau of Investigation," the initials "F.B.I." or any colorable imitation, in various formats "in a manner reasonably calculated to convey the impression that such advertisement, . . . publication, . . . broadcast, telecast, or other production, is approved, endorsed, or authorized by the Federal Bureau of Investigation." Thus, an examining attorney must refuse to register such matter, pursuant to 18 U.S.C. §709,  if its use is reasonably calculated to convey an approval, endorsement, or authorization by the Federal Bureau of Investigation.
• (4) Section 110 of the Amateur Sports Act of 1978, 36 U.S.C. §220506,  protects various designations associated with the Olympics. The United States Supreme Court has held that the grant by Congress to the United States Olympic Committee of the exclusive right to use the word "Olympic" does not violate the First Amendment. San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 3 USPQ2d 1145 (1987) (concerning petitioner’s use of "Gay Olympic Games"). See TMEP §§1205.01(b)–1205.01(b)(vii) for information about marks comprising Olympic matter.
• (5) In chartering the Blinded Veterans Association, Congress granted it the sole right to use its name and such seals, emblems, and badges as it may lawfully adopt. 36 U.S.C. §30306.  This protection of its exclusive right to use "Blinded Veterans Association" does not extend to the term "blinded veterans," which has been found generic. Blinded Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035, 10 USPQ2d 1432 (D.C. Cir. 1989).
• (6) Red Crescent Emblem, Third Protocol Emblem, or the designations "Red Crescent" and "Third Protocol Emblem."Under 18 U.S.C. §706a,  the use of the distinctive emblems the Red Crystal and the Red Crescent, as well as the designations "Third Protocol Emblem" and "Red Crescent," or any imitation thereof, is prohibited, except by those authorized to wear, display, or use them under the provisions of the Geneva Conventions. The statute carves out an exception for use of any emblem, sign, insignia, or words which were lawfully used on or before December 8, 2005, if use of these would not appear in time of armed conflict to confer the protections of the Geneva Conventions of August 12, 1949. See TMEP §§1205.01(a)–1205.01(a)(vi) for further information.
• (7) Swiss Confederation Coat of Arms. Under 18 U.S.C. §708,  use of the Swiss Confederation coat of arms as a trademark or for any other commercial purpose is prohibited. Because the statute does not specify any authorized users, no one may lawfully use the coat of arms as a trademark or service mark in the United States, unless the mark was in use on or before August 31, 1948. See In re Health Maint. Orgs., Inc., 188 USPQ 473 (TTAB 1975) (holding mark comprising a dark cross with legs of equal length on which a caduceus is symmetrically imposed (representation of caduceus disclaimed) registrable, the Board finding the mark readily distinguishable from the Greek red cross (on white background) and the Swiss confederation coat of arms (white cross on red background)). See TMEP §§1205.01(d)–1205.01(d)(iii) for further information.

Usually, the statute will define the appropriate use of a designation and will prescribe criminal penalties or civil remedies for improper use. However, the statutes themselves do not provide the basis for refusal of trademark registration. To determine whether registration should be refused in a particular application, the examining attorney should consult the relevant statute to determine the function of the designation and its appropriate use. If a statute provides that a specific party or government agency has the exclusive right to use a designation, and a party other than that specified in the statute has applied to register the designation, the examining attorney must refuse registration on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051   and 1127, in addition to the relevant statute. See TMEP §907.

Depending on the nature and use of the mark, other sections of the Trademark Act may also bar registration and must be cited where appropriate. For example, it may be appropriate for the examining attorney to refuse registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a),  on the ground that the mark comprises matter that may falsely suggest a connection with a person, institution, belief, or national symbol specified in the statute (e.g., the United States Olympic Committee). See TMEP §§1203.03(b)–1203.03(b)(iii). It may be appropriate to refuse registration under §2(b), 15 U.S.C. §1052(b), for matter that comprises a flag, coat of arms, or other similar insignia. See TMEP §1204. It may be appropriate to refuse registration under §2(d), 15 U.S.C. §1052(d),  if the party specified in the statute owns a registration for a mark that is the same or similar.

In some instances, it may be appropriate for the examining attorney to refuse registration pursuant to §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark. For service mark applications, §3 of the Act, 15 U.S.C. §1053,  must also be cited as a basis for refusal.

To determine what action is appropriate, the examining attorney should look to the particular use of a symbol or term by the applicant. For example, where it is evident that the applicant has merely included a copyright symbol in the drawing of the mark inadvertently, and the symbol is not a material portion of the mark, the examining attorney must indicate that the symbol is not part of the mark and require that the applicant amend the drawing to remove the symbol, instead of issuing statutory refusals of the types noted above.

Examining attorneys should also consider whether registration of matter comprised in whole or in part of designations notified pursuant to Article 6ter of the Paris Convention and entered into the USPTO’s search records may be prohibited by §§2(a) and 2(b) of the Trademark Act, 15 U.S.C. §§1052(a)   and 1052(b). See TMEP §1205.02.

1205.01(a)    Examination Procedures for Marks Comprising a Red Crystal or Red Crescent on a White Background, or the Phrases "Red Crescent" or "Third Protocol Emblem"

On December 8, 2005, the United States signed the Third Protocol Additional to the 1949 Geneva Conventions relating to the Adoption of an Additional Distinctive Emblem (the "Protocol"). The Protocol creates two new distinctive emblems: (1) the Third Protocol Emblem, composed of a red diamond on a white background (shown below); and (2) the Red Crescent, composed of a red crescent on a white background (shown below).

Effective January 12, 2007, Public Law 109-481, 120 Stat. 3666, created a new criminal statutory provision, 18 U.S.C. §706a,  to prohibit the use of the distinctive emblems the Red Crystal and the Red Crescent, or any imitation thereof, as well as the designations "Third Protocol Emblem" and "Red Crescent," except by those authorized to wear, display, or use them under the provisions of the Geneva Conventions. Geneva Distinctive Emblems Protection Act of 2006, Pub. L. No. 109-481, 120 Stat. 3666 (2007). The statute carves out an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before December 8, 2005, if use of these would not appear in time of armed conflict to confer the protections of the Geneva Conventions of August 12, 1949. Id.The provisions of 18 U.S.C. §706a  closely mirror the existing provision in 18 U.S.C. §706  for the American National Red Cross (see TMEP §1205.01).

1205.01(a)(i)    First Use After December 8, 2005

If a party other than an authorized party (see TMEP §1205.01(a)(vi) for definition of authorized party) applies to register the Red Crescent, the Third Protocol Emblem, or the designation "Red Crescent" or "Third Protocol Emblem," and claims a date of first use in commerce after December 8, 2005, the examining attorney must refuse registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a),  on the ground that the mark comprises matter that may falsely suggest a connection with the International Federation of Red Cross and Red Crescent Societies and/or other authorized parties under the statute. See 18 U.S.C. §706a; TMEP §1203.03(e). The examining attorney must provide appropriate supporting evidence for the refusal. In addition, a refusal must also be made on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051   and 1127.

When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark or, in the case of services, §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, as appropriate. See TMEP §1202.

1205.01(a)(ii)    First Use On or Before December 8, 2005 – Grandfather Clause

Registration of the Red Crescent, the Third Protocol Emblem, or the designation "Red Crescent" or "Third Protocol Emblem" need not be refused where, in an application under §1 of the Trademark Act, 15 U.S.C. §1051,  the applicant claims a date of first use in commerce on or before December 8, 2005, if the goods and services would not appear in time of armed conflict to confer the protections of the Geneva Conventions. 18 U.S.C. §706a.  However, registration should be refused under §2(a) and §§1 and 45 of the Act if the goods or services are of a type typically offered as emergency relief or assistance in times of armed conflict. Such goods or services may include, but are not limited to, medical or first-aid assistance, religious and charitable services, clothing, and food items. The refusals can be withdrawn if the applicant amends the identification to indicate that the goods/services are not offered as emergency relief or assistance in time of armed conflict.

When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark or, in the case of services, §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, as appropriate. See TMEP §1202.

1205.01(a)(iii)    Date of First Use Not Specified

For applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a),  where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the date of first use in commerce is or will be after December 8, 2005, unless the application record indicates otherwise.

Although applications based on §1(b), §44, or §66(a) need not initially show actual use of the mark in commerce, applicants filing under these bases must have a bona fide intent to use the mark in commerce. See TMEP §§1008, 1009, 1101, 1102, 1904.01(c), 1904.01(d). Because "use in commerce" under the Trademark Act means "lawful use in commerce," any intended use of the mark serving as the basis for these types of applications must also be lawful. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010) ; In re Midwest Tennis & Track Co., 29 USPQ2d at 1386 n.2 (TTAB 1993) ; Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982) ; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007) ("It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful. . . . [W]e also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.") (citations omitted). With respect to a mark containing the Red Crescent, the Third Protocol Emblem, or the designation "Red Crescent" or "Third Protocol Emblem," actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce. See John W. Carson Found., 94 USPQ2d at 1948. Therefore, it is appropriate to issue a refusal under §§1 and 45 for applications based on §1(b), §44, or §66(a) if the facts and available evidence support the conclusion that the mark contains the prohibited symbols or wording.

1205.01(a)(iv)    Applicable Refusals

The statute prohibiting use of the Red Crystal and Red Crescent symbols by unauthorized parties applies to "any sign or insignia made or colored in imitation thereof." 18 U.S.C. §706a.  If the mark includes a design element where the color red is claimed, and the design would be likely to be perceived as the Red Crystal symbol or the Red Crescent symbol, and it is not significantly altered, stylized, or merged with other elements in the mark, the examining attorney must refuse registration under §§1 and 45, because the mark is not in lawful use in commerce, and under §2(a), if any of the following conditions exist:

• the drawing or foreign registration shows the symbol in red;
• the drawing is not in color, but the specimen shows the symbol in red; or
• the drawing is not in color, but it includes the wording "Red Crescent" or "Third Protocol Emblem."

See TMEP §§1205.01(a) and 1205.01(a)(i). If the drawing shows the symbol in red, the refusals may be withdrawn if the applicant amends the drawing to a different, non-prohibited color scheme, or a non-color version of the drawing (i.e., a black-and-white or gray scale drawing), and submits a proper substitute specimen showing use of the mark in a color other than red. If the drawing is not in color, but the specimen shows the symbol in red, the refusals may be withdrawn if the applicant submits a proper substitute specimen showing use of the mark in a color other than red. Cf. TMEP §§1205.01(d)(i)(D), 1205.01(d)(ii)(D). A photocopy of the original specimen is not an acceptable substitute specimen.

A mark that includes a crescent or crystal design element will generally be considered registrable, and will not be refused under §§1 and 45, or under §2(a), if the applicant does not claim color as a feature of the mark and the specimen shows the symbol in a color other than red. In such cases, a statement that the mark is not used in the color red is unnecessary, and if submitted, must not be printed on the registration certificate.

Regarding the phrases "Red Crescent" and "Third Protocol Emblem," the statute prohibiting use of these designations does not apply to variations or modifications of these words. Only marks that include the exact wording RED CRESCENT or THIRD PROTOCOL EMBLEM, with or without additional wording, must be refused under §2(a) and §§1 and 45.

For example, REDCRESCENTS would not be refused registration, but RED CRESCENT DONOR could be refused registration if the date of first use is after December 8, 2005, or the application otherwise fails to qualify for the grandfather clause described in TMEP §1205.01(a)(ii).

1205.01(a)(v)    Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation

If the mark is unregistrable because it includes the Red Crescent or Third Protocol symbols or words, a disclaimer of the unregistrable matter will not render the mark registrable. Similarly, disclaimer of the color red is inappropriate, and will not obviate a refusal of registration.

On the other hand, if the unregistrable symbol or designation is deleted from the mark sought to be registered, the examining attorney should withdraw the refusal(s) based on the unregistrable symbol or designation, and, if necessary, refuse registration because the amendment to the mark is material. Deletions of matter determined to be unregistrable under §2(a) of the Act are sometimes permissible. See TMEP §807.14(a).

The examining attorney may also permit an amendment from a color drawing to a black-and-white drawing, to eliminate the claim of the color red, if such an amendment would not constitute a material alteration of the mark, and the amendment is supported by a proper specimen. See TMEP §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks, and TMEP §1205.01(a)(iv) regarding the situation where the applicant does not claim color as a feature of the mark, but the specimen shows use of the mark in red.

1205.01(a)(vi)    Parties Authorized to use the Red Crescent and Third Protocol Emblem

Under 18 U.S.C. §706a,  the following parties are authorized to use the Red Crescent symbol and the Third Protocol Emblem on a white background and the designations "Red Crescent" and "Third Protocol Emblem:"

• (1) authorized national societies that are members of the International Federation of Red Cross and Red Crescent Societies, and their duly authorized employees and agents;
• (2) the International Committee of the Red Cross, and its duly authorized employees and agents;
• (3) the International Federation of Red Cross and Red Crescent Societies, and its duly authorized employees and agents; and
• (4) the sanitary and hospital authorities of the armed forces of State Parties to the Geneva Conventions of August 12, 1949.

If the applicant is not clearly authorized to use an emblem or designation, the examining attorney must refuse registration. The refusal may be withdrawn if the applicant or the applicant’s attorney submits a statement that the applicant is an authorized party, and indicates the reason why the applicant is authorized (e.g., applicant is an authorized agent of the International Federation of Red Cross and Red Crescent Societies).

1205.01(b)    Examination Procedures for Marks Comprising Matter Related to the United States Olympic Committee or the Olympics

Following passage of the Amateur Sports Act of 1978, 36 U.S.C. §380,  unauthorized use of words and symbols associated with the United States Olympic Committee ("USOC") or the Olympics subjected the user to civil actions and remedies. In 1998, Congress amended the 1978 act to the Ted Stevens Olympic and Amateur Sports Act ("OASA"), 36 U.S.C. §220506.  In the amended Act, Congress designated certain Olympic-related words and symbols as being the exclusive property of the USOC, subject to limited exceptions. 36 U.S.C.  §220506.

The USOC has the exclusive right to use the name "United States Olympic Committee" and the words "Olympic," "Olympiad," "Citius Altius Fortius," "Pan American," "Paralympic," "Paralympiad," "America Espirito Sport Fraternite," or any combination of these words. 36 U.S.C. §220506(a).  The statutory protection also extends to the International Olympic Committee’s symbol of five interlocking rings, the International Paralympic Committee’s symbol of three TaiGeuks, and the Pan-American Sports Organization’s symbol of a torch surrounded by concentric rings. Id. The statute permits the USOC to authorize its contributors and suppliers to use the enumerated Olympic-related words or symbols, 36 U.S.C. §220506(b),  exempts certain pre-existing uses and geographic references, 36 U.S.C. §220506(d),  and allows the USOC to initiate civil-action proceedings to address unauthorized use, 36 U.S.C.  §220506(c).

Proposed marks that contain the designated Olympic-related words or symbols, or any combination thereof, cannot be registered on the Principal or Supplemental Register (nor can the matter be disclaimed) and must be refused registration on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051  and 1127, for trademark applications or §§1, 3, and 45, 15 U.S.C. §§1051, 1053, and 1127, for service mark applications, as well as the OASA. Other statutory refusals under the Trademark Act may also bar registration, such as falsely suggesting a connection under 15 U.S.C. §§1052(a)   and likelihood of confusion under 15 U.S.C. §§1052(d),  and should be issued as appropriate. See TMEP §1205.01(b)(ii).

1205.01(b)(i)    Nature of the Mark

Under 36 U.S.C. §220506(a),  no applicant other than the USOC is capable of having lawful use in commerce of marks containing the designated Olympic-related words and symbols, or any combination thereof, and an applicant cannot obviate the spirit of the law by crafting a mark that combines a designated Olympic-related word or symbol with a non-designated word or symbol. U.S. Olympic Comm. v. O-M Bread, Inc., 29 USPQ2d 1555, 1557-58 (TTAB 1993) (sustaining opposition to registration of OLYMPIC KIDS).

A refusal for unlawful use pursuant to §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051  and 1127  or §§1, 3, and 45, 15 U.S.C. §§1051, 1053, and 1127, is required if the applicant’s mark contains the exact words or symbols, or any combination thereof, enumerated in the statute. See, e.g., In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1388 (TTAB 1993) (reversing the refusal to register OLYMPIAN GOLDE since the mark did not comprise any of the forbidden words themselves, or a combination of them, and the statute did not encompass "simulations" of the listed words); U.S. Olympic Comm. v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497, 500 (TTAB 1984) (denying USOC’s opposition because OLYMP was not the same as OLYMPIC or OLYMPIAD, or a combination thereof, and, therefore, USOC cannot claim exclusive right of use).

1205.01(b)(ii)    Issuing Other Substantive Refusals

Applications for marks comprising Olympic-related matter must also be analyzed for other substantive refusals in the same manner as any other application. The most common refusals that may accompany a refusal for unlawful use, or be issued by themselves or in combination, are a §2(a) refusal for deception or falsely suggesting a connection with the USOC or the Olympics and a §2(d) refusal for likelihood of confusion. 15 U.S.C. §1052(a)  and (d). See TMEP §§1203.02–1203.02(f)(ii) regarding deceptive matter, §§1203.03–1203.03(f) regarding matter falsely suggesting a connection, and §§1207–1207.04(g)(i) regarding likelihood of confusion.

As to §2(a) refusals, the Board determined that "there are various international and national organizations pertaining to the Olympic Games" and that "the entire organization which comprises the Olympic Games, as a whole qualifies as an "institution" within the meaning of Section 2(a)." In re Urbano, 51 USPQ2d 1776, 1779-80 (TTAB 1999) (affirming the §2(a) refusal to register SYDNEY 2000 because the mark falsely suggested a connection with the Olympic Games held in Sydney, Australia in 2000; 15 U.S.C. §1052(a).  Therefore, the United States Olympic Committee is part of the "institution" and entitled to protection under §2(a)). See In re Midwest Tennis & Track, Co., 29 USPQ2d 1386, 1389 (TTAB 1993) (reversing the §2(a) refusal and finding that OLYMPIAN GOLDE had multiple connotations and did not point "uniquely and unmistakably to the USOC" as would be required under §2(a)); In re Kayser-Roth Corp., 29 USPQ2d 1379, 1385 (TTAB 1993) (reversing the §2(a) refusal and noting "[t]he question is not whether the word ‘Olympic’ falsely suggests a connection with the persona or identity of the United States Olympic Committee's but whether applicant's mark OLYMPIC CHAMPION does . . . [we cannot] say on the basis of the record before us that the mark OLYMPIC CHAMPION ‘points uniquely and unmistakably’ to the United States Olympic Committee inasmuch as that term may as likely point to a contestant representing a country other than the United States in the Olympic games."); U.S. Olympic Comm. v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497, 499 (TTAB 1984) (denying USOC’s §2(a) claims since there was no evidence presented to establish that OLYMP was deceptive of the clothing goods or that OLYMP falsely suggested a connection with USOC).

Factors that may be relevant to a §2(d) refusal for likelihood of confusion include the wide variety of goods and services in connection with which marks consisting of Olympic-related matter are often used, the channels of trade in which they are found, and the level of sophistication of consumers of such Olympic-related products as t-shirts, mugs, and pins. The Board has also upheld likelihood of confusion where an applicant other than the USOC used OLYMP or LYMPIC as part of its mark. See Olymp-Herrenwaschefabriken 224 USPQ at 498 (sustaining USOC’s opposition to registration of OLYMP based on likelihood of confusion with its OLYMPIC marks); U.S. Olympic Comm. v. Org. for Sport Aviation Competition, 2002 TTAB Lexis 195 (TTAB 2002) (granting summary judgment to the USOC on the issue of likelihood of confusion against the mark SKYLYMPICS for aviation sporting events).

In proposed marks identifying specific Olympic Games by city and year, the examining attorney should consider the marks unitary, with the primary significance being that of the Olympic Games event, and not issue substantive refusals for descriptiveness or geographic descriptiveness or requirements for disclaimers. Urbano, 51 USPQ2d at 1779-80 (reversing the refusals under §§2(e)(1), 2(e)(2), and 2(e)(3) because the primary significance of the mark was as a reference to the Olympic Games).

1205.01(b)(iii)    Amendments to Disclaim, Delete, or Amend the Unregistrable Wording or Symbol

If the mark is unregistrable because it includes Olympic-related matter, a disclaimer of the unregistrable matter will not render the mark registrable. If the applicant submits an amendment deleting the unregistrable matter, the examining attorney must, if appropriate, refuse registration because the amendment to the mark is material and maintain the refusal(s) based on the unregistrable symbol or designation in the alternative.

1205.01(b)(iv)    Consent to Register

The USOC is permitted to authorize third parties to use and register the restricted Olympic-related words and symbols listed in the OASA. 36 U.S.C. §220506(b).  If an applicant submits proof of consent from the USOC to both use and register the mark, the statutory requirement is satisfied.

1205.01(b)(v)    First Use On or After September 21, 1950

If a party other than the USOC applies to register Olympic-related matter designated in the OASA and claims a date of first use in commerce on or after September 21, 1950, the examining attorney must refuse registration on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051  and 1127, for trademark applications or §§1, 3, and 45, 15 U.S.C. §§1051, 1053, and 1127, for service mark applications. The examining attorney must provide appropriate supporting evidence for the refusal. In addition, refusals may also be made on other relevant grounds. See TMEP §1205.01(b)(ii).

1205.01(b)(vi)    First Use Before September 21, 1950 – Grandfather Clause

Olympic-related matter enumerated in the OASA need not be refused registration where an applicant claims pre-existing use of the mark for any lawful purpose prior to September 21, 1950. 36 U.S.C. §220506(d)(1).  An applicant making such a claim is permitted to continue lawful use of the mark for the same purpose and same goods or services. 36 U.S.C.  §220506(d)(2).

Registration of a new mark that creates a materially different commercial impression than the earlier mark, even if that mark incorporates the grandfathered wording, is not permitted. O-M Bread, Inc. v. U.S. Olympic Comm., 65 F.3d 933, 938-39, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (sustaining opposition against registration of OLYMPIC KIDS for bakery products, even though applicant had grandfather rights in OLYMPIC for the same goods, and noting that OLYMPIC and OLYMPIC KIDS are not legal equivalents).

Expanding the use of a grandfathered mark to additional goods and services is generally not permissible, and should be construed very narrowly. See In re Kayser-Roth Corp., 29 USPQ2d 1379, 1383-84 (TTAB 1993) (reversing the refusal to register OLYMPIC CHAMPION when applicant sought to expand use of the mark from various clothing goods to socks; finding that applicant had grandfather rights in the same mark for certain apparel and noting that socks have "attributes in common with the other named [clothing] goods" that permitted this additional use by applicant).

1205.01(b)(vii)    Date of First Use Not Specified

For applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the date of first use in commerce is or will be after September 21, 1950, unless the application record indicates otherwise.

Although applications based on §1(b), §44, or §66(a) need not initially show actual use of the mark in commerce, applicants filing under these bases must have a bona fide intent to use the mark in commerce. See TMEP §§1008, 1009, 1101, 1102, 1904.01(c), 1904.01(d). Because "use in commerce" under the Trademark Act means "lawful use in commerce," any intended use of the mark serving as the basis for these types of applications must also be lawful. See John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010) ; In re Midwest Tennis & Track Co., 29 USPQ2d at 1386 n.2 (TTAB 1993) ; Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982) ; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007) ("It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful. . . . [W]e also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.") (citations omitted). With respect to a mark containing the designated Olympic-related words or symbols, or any combination thereof, actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce. See John W. Carson Found., 94 USPQ2d at 1948. Therefore, it is appropriate to issue a refusal under §§1 and 45 for applications based on §1(b), §44, or §66(a) if the facts and available evidence support the conclusion that the mark contains the prohibited wording and/or symbols.

1205.01(b)(viii)    Geographic-Reference Exception

The OASA provides a narrow geographic-reference exception for use of the word OLYMPIC for businesses, goods, or services operated, sold, and marketed in the State of Washington west of the Cascade Mountain range. 36 U.S.C. §220506(d)(3).  To qualify for the exception, the following requirements must be met: (1) the owner must not use the word OLYMPIC in combination with any of the other designated Olympic-related words or symbols; (2) it must be evident from the circumstances that use of the word OLYMPIC refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the USOC or any Olympic activity; and (3) the goods or services offered under the OLYMPIC mark must be marketed and sold locally in Washington state west of the Cascade Mountain range, and not have substantial operations, sales, and marketing outside of this area. Since these requirements severely restrict the option of interstate commerce, which is regulated by Congress and a requirement under the Trademark Act, it is unlikely an applicant will be able to obtain a federal trademark registration under this exception.

1205.01(c)    Examination Procedures for Marks Containing Greek Red Cross or the Phrases "Red Cross" or "Geneva Cross"

Federal law prohibits anyone other than the American National Red Cross and its duly authorized employees and agents and the sanitary and hospital authorities of the armed forces of the United States from using the Greek red cross on a white ground or the words "Red Cross" or "Geneva Cross." 18 U.S.C. §706.  There is an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before June 25, 1948.

1205.01(c)(i)    Date of First Use is Before or After June 25, 1948

Registration of the Greek red cross on a white ground or the words "Red Cross" or "Geneva Cross" need not be refused where, in an application under §1 of the Trademark Act, 15 U.S.C. §1051, the applicant claims a date of first use in commerce on or before June 25, 1948. However, if a party other than an authorized party applies to register the Greek red cross on a white ground, or the designation "Red Cross" or "Geneva Cross," and claims a date of first use in commerce after June 25, 1948, the examining attorney must refuse registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a), on the ground that the mark comprises matter that may falsely suggest a connection with the American National Red Cross under the statute. See 18 U.S.C. §706; TMEP §1203.03(e). The examining attorney must provide appropriate supporting evidence for the refusal. In addition, a refusal must also be made on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051   and 1127.

1205.01(c)(ii)    Date of First Use Not Specified

For applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a),  where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the date of first use in commerce is or will be after June 25, 1948, unless the application record indicates otherwise.

Although applications based on §1(b), §44, or §66(a) need not initially show actual use of the mark in commerce, applicants filing under these bases must have a bona fide intent to use the mark in commerce. See TMEP §§1008, 1009, 1101, 1102, 1904.01(c), 1904.01(d). Because "use in commerce" under the Trademark Act means "lawful use in commerce," any intended use of the mark serving as the basis for these types of applications must also be lawful. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010) ; In re Midwest Tennis & Track Co., 29 USPQ2d at 1386 n.2 (TTAB 1993) ; Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982) ; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007) ("It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful. . . . [W]e also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.") (citations omitted). With respect to a mark containing the Greek red cross on a white ground, or the designation "Red Cross" or "Geneva Cross," actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce. See John W. Carson Found., 94 USPQ2d at 1948. Therefore, it is appropriate to issue a refusal under §§1 and 45 for applications based on §1(b), §44, or §66(a) if the facts and available evidence support the conclusion that the mark contains the prohibited symbol or wording.

1205.01(c)(iii)    Applicable Refusals

The statute prohibiting use of the Greek red cross on a white ground, or the designation "Red Cross" or "Geneva Cross," by unauthorized parties applies to "any insignia colored in imitation thereof." 18 U.S.C. §706.  If the mark includes a design element that would be likely to be perceived as the Geneva red cross, and it is not significantly altered, stylized, or merged with other elements in the mark, the examining attorney must refuse registration under §§1 and 45, because the mark is not in lawful use in commerce, and under §2(a), if any of the following conditions exist:

• the drawing or foreign registration shows the symbol in red;
• the drawing is not in color, but the specimen shows the symbol in red; or
• the drawing is not in color, but it includes the wording Red Cross or Geneva Cross.

See TMEP §1205.01(c). If the drawing shows the symbol in red, the refusals may be withdrawn if the applicant amends the drawing to a different, non-prohibited color scheme, or a non-color version of the drawing (i.e., a black-and-white or gray scale drawing), and submits a proper substitute specimen showing use of the mark in a color other than red. If the drawing is not in color, but the specimen shows the symbol in red, the refusals may be withdrawn if the applicant submits a proper substitute specimen showing use of the mark in a color other than red. Cf. TMEP §§1205.01(d)(i)(D), 1205.01(d)(ii)(D). A photocopy of the original specimen is not an acceptable substitute specimen.

A mark that includes a Greek cross will generally be considered registrable, and will not be refused as a red cross under §§1 and 45, or under §2(a), if the applicant does not claim color as a feature of the mark and the specimen shows the symbol in a color other than red. In such cases, a statement that the mark is not used in the color red is unnecessary, and if submitted, must not be printed on the registration certificate.

Regarding the phrases "Red Cross" and "Geneva Cross," the statute prohibiting use of these designations does not apply to variations or modifications of these words. Only marks that include the exact wording RED CROSS or GENEVA CROSS, with or without additional wording, must be refused under §2(a) and §§1 and 45.

For example, RED CROSSES would not be refused registration, but RED CROSS DONOR could be refused registration if the date of first use is after June 25, 1948.

1205.01(c)(iv)    Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation

If the mark is unregistrable because it includes the Greek red cross on a white ground, or the designation "Red Cross" or "Geneva Cross," a disclaimer of the unregistrable matter will not render the mark registrable. Similarly, disclaimer of the color red is inappropriate, and will not obviate a refusal of registration.

On the other hand, if the unregistrable symbol or designation is deleted from the mark sought to be registered, the examining attorney should withdraw the refusal(s) based on the unregistrable symbol or designation, and, if necessary, refuse registration because the amendment to the mark is material. Deletions of matter determined to be unregistrable under §2(a) of the Act are sometimes permissible. See TMEP §807.14(a).

The examining attorney may also permit an amendment from a color drawing to a black-and-white drawing, to eliminate the claim of the color red, if such an amendment would not constitute a material alteration of the mark, and the amendment is supported by a proper specimen. See TMEP §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks, and TMEP §1205.01(c)(iii) regarding the situation where the applicant does not claim color as a feature of the mark, but the specimen shows use of the mark in red.

1205.01(d)    Examination Procedures for Marks Containing the Swiss Confederation Coat of Arms or Flag

The Trademark Act bars registration of trademarks or service marks containing the coat of arms or flag of the Swiss Confederation, commonly known as Switzerland. See 15 U.S.C. §§1052(a), 1052(b), 1052(e)(2), 1052(e)(3), 1127; Britannica.com, Switzerland, http://www.britannica.com/EBchecked/topic/577225/Switzerland  (accessed Aug. 15, 2012); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/  (accessed Feb. 24, 2022).

The Swiss coat of arms consists of a white equilateral cross displayed upright on a red triangular shield and the Swiss flag consists of a white equilateral cross displayed upright on a red square. See Swiss Fed. Act of 21 June 2013 on the Protection of the Swiss Coat of Arms and Other Public Signs (Coat of Arms Protection, CAPA) https://www.fedlex.admin.ch/eli/cc/2015/613/en  (accessed April 19, 2022) (indicating that "[t]he Swiss cross is a white, upright, free-standing cross depicted against a red background, whose arms, which are all of equal size, are one-sixth longer than they are wide" and that "[t]he Coat of Arms of the Swiss Confederation (the Swiss coat of arms) is a Swiss cross in a triangular shield"); Britannica.com, flag of Switzerland, https://www.britannica.com/topic/flag-of-Switzerland  (accessed April 19, 2022); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/flag  (accessed April 19, 2022).

Swiss Coat of Arms

Swiss Flag

The primary refusals that apply to marks containing the Swiss coat of arms, the Swiss flag, or simulations thereof, are the following:

• A refusal under Trademark Act §§1 and 45, because the mark is not in lawful use in commerce, based on the prohibition, under 18 U.S.C. §708,  of the commercial use of the Swiss coat of arms. 15 U.S.C. §§1051, 1127; see also TMEP §1205.01.
• A refusal under §2(b), because the mark consists of or comprises the flag or coat of arms of a foreign country, namely, Switzerland. 15 U.S.C. §1052(b);  see also TMEP §§ 1204–1204.01(e), 1204.04.

1205.01(d)(i)    Refusal Under Sections 1 and 45: Swiss Coat of Arms Not in Lawful Use

Federal law prohibits anyone from using the Swiss Confederation coat of arms as a trademark or for any other commercial purpose. Specifically, the text of 18 U.S.C. §708  reads 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.

The statute describes the coat of arms as "an upright white cross with equal arms and lines on a red ground." 18 U.S.C. §708.  Although the Swiss flag features this same type of white cross, the statute refers to the "coat of arms" and therefore is applied only to the Swiss coat of arms, which consists of a white equilateral cross displayed upright on a red triangular shield.

The text of 18 U.S.C. §708  does not specify any authorized users of the Swiss coat of arms. Accordingly, no one may lawfully use the coat of arms as a trademark or service mark in the United States, unless the mark was in use on or before August 31, 1948. See 18 U.S.C. §708.  Thus, regardless of the identity of the applicant, any mark containing the Swiss coat of arms, or a simulation thereof, which was not in use on or before that date, must be refused under §§1 and 45 because the mark is not in lawful use in commerce.

Although applications based on §1(b), §44, or §66(a) need not initially show actual use of the mark in commerce, applicants filing under these bases must have a bona fide intent to use the mark in commerce. See TMEP §§1008, 1009, 1101, 1102, 1904.01(c), 1904.01(d). Because "use in commerce" under the Trademark Act means "lawful use in commerce," any intended use of the mark serving as the basis for these types of applications must also be lawful. See John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010) ; In re Midwest Tennis & Track Co., 29 USPQ2d at 1386 n.2 (TTAB 1993) ; Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982) ; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007) ("It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful. . . . [W]e also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.") (citations omitted). With respect to a mark containing the Swiss coat of arms, actual lawful use in commerce is not possible and thus there can be no bona fide intent to lawfully use the mark in commerce. John W. Carson Found., 94 USPQ2d at 1948. Therefore, it is appropriate to issue a refusal under §§1 and 45 for applications based on §1(b), §44, or §66(a) if the facts and available evidence support the conclusion that the mark contains the Swiss coat of arms or a simulation thereof.

To properly support a refusal under §§1 and 45, based on a finding that the mark is not, or cannot be, in lawful use in commerce, there must be some indication that the mark features the Swiss coat of arms or a simulation thereof. A "simulation" refers to "something that gives the appearance or effect or has the characteristics of an original item." In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973) (citing Webster’s Third New Int’l Dictionary (unabridged ed. 1965)); see TMEP §1204. Whether particular matter is a simulation of the Swiss coat of arms is determined by a visual comparison of the matter and the coat of arms. Id.

The application record usually contains sufficient information to establish that the mark contains the Swiss coat of arms or a simulation thereof. For example, the drawing may show a white cross on a red triangular shield. Or, if the drawing is not in color, the specimen, color claim, or color description may indicate that these elements appear in the prohibited color scheme.

Even if the application record itself does not provide evidence of unlawful use, it may be appropriate in some instances to base a refusal under §§1 and 45 on extrinsic evidence of applicant’s use of the mark. Examining attorneys are not required to search for extrinsic evidence. However, if the examining attorney locates relevant extrinsic evidence in the course of examining the mark, that evidence may be used to support the refusal.

1205.01(d)(i)(A)    When a Refusal Under Sections 1 and 45 Must Be Issued

The examining attorney must issue a "not in lawful use" refusal under §§1 and 45 if a mark contains an element composed of an upright equilateral cross on a triangular shield (or a simulation thereof) that is not significantly altered, stylized, or merged with other elements in the mark; the dates of use are after August 31, 1948 (or are not provided); and any of the following conditions exist:

• the drawing shows the cross in white and the 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 shield is red or (ii) the specimen shows the cross in white and shield in red; or
• the drawing is not in color, there is no color claim, the mark description does not reference color (or there is no mark description), and there is no specimen of record (because one has not been submitted or is not required), but the examining attorney has found extrinsic evidence indicating that the applicant actually uses the mark in the white cross/red shield color scheme.

If the dates of use provided do not clearly indicate that the mark was in use on or before August 31, 1948, it should be presumed that the first use occurred after that date. In applications based on §1(b), §66(a), or solely on §44, the use dates should be presumed to be after August 31, 1948. These procedures apply regardless of the application filing basis.

The basis for concluding that a mark containing the Swiss coat of arms is not in lawful use is 18 U.S.C. §708,  but the basis for refusing registration of the mark is Trademark Act §§1 and 45. Thus, when refusing registration on the ground that the mark is not in lawful use in commerce, the examining attorney must cite §§1 and 45, 15 U.S.C. §§1051, 1127, in support of the refusal and explain that the finding of unlawful use is based on 18 U.S.C.  §708. See TMEP §1205.01. When issuing the refusal, the examining attorney should provide evidence showing the typical depiction of the Swiss coat of arms. See TMEP §1205.01(c).

For applications based on §1(a), the examining attorney must issue a requirement for additional information under 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 triangular shield (or a simulation thereof), the dates of use are after August 31, 1948 (or are not provided), and all of the following conditions exist:

• the drawing is not in color;
• there is no color claim;
• the mark description does not reference color (or there is no mark description);
• 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); and
• the examining attorney has found no extrinsic evidence indicating applicant actually uses the mark in the white cross/red shield color scheme.

The requirement for additional information should advise the applicant that the use of the Swiss coat of arms in the white and red color scheme is prohibited under 18 U.S.C. §708,  and require the applicant to provide either a color version of the specimen of record or a statement that the cross-and-shield element 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 cross-and-shield is displayed in colors other than white and red, no refusal under §§1 and 45 should issue. The statement that the cross-and-shield element, as used in the specimen of record, is not displayed in the prohibited color scheme may be submitted in a response to an Office action or 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.

1205.01(d)(i)(B)    When an Advisory Should Be Provided

If issuing an Office action for other reasons, the examining attorney should provide an advisory regarding the potential refusal under §§1 and 45 when all of the following conditions exist:

• the dates of use are after August 31, 1948 (or are not provided);
• the mark contains an upright equilateral cross on a triangular shield that is not significantly altered, stylized, or merged with other elements in the mark;
• the drawing is not in color;
• the application record does not contain a specimen or any indication of the colors that appear in the mark as it is actually used; and
• the examining attorney has found no extrinsic evidence that the applicant uses the cross-and-shield element in the prohibited color scheme (the examining attorney is not required to search for such extrinsic evidence).

If the dates of use provided do not clearly indicate that the mark was in use on or before August 31, 1948, it should be presumed that the first use occurred after that date. In applications based on §1(b), §66(a), or solely on §44, the use dates should be presumed to be after August 31, 1948.

If possible, the examining attorney should provide the advisory in the initial Office action. The advisory should indicate that a refusal under Trademark Act §§1 and 45 will issue if the specimen submitted with an allegation of use (for §1(b) applications) or a §8 or §71 affidavit or declaration of use (for §44 and §66(a) applications) shows the cross-and-shield element in a white and red color scheme. In addition, the applicant should be advised that a color version of the specimen showing a red cross on a white ground may result in a refusal on the ground that the mark is not in lawful use in commerce based on 18 U.S.C. §706   (see TMEP §§ 1205.01(c)–(c)(iv) regarding marks containing the Greek red cross and TMEP §1205.01(d)(iii). Failure to provide an advisory does not preclude a refusal of registration in a subsequent Office action or a refusal of a §8 or §71 affidavit or declaration of use. Cf. TMEP §1202.

1205.01(d)(i)(C)    When a Refusal Under Sections 1 and 45 Should Not Be Issued

Even if the mark contains an element composed of an upright equilateral cross on a triangular shield, the examining attorney should not issue a refusal under §§1 and 45 if any of the following conditions exist:

• the applicant specifies that the mark was in use on or before August 31, 1948;
• the coat of arms shown in the mark is significantly altered, stylized, or merged with other elements in the mark, so as to create a different commercial impression from the actual Swiss coat of arms;
• the drawing is not in color, there is no color claim, the mark description has been omitted or does not reference color, and the application contains a color specimen that shows the relevant matter in a color scheme other than white and red; or
• the drawing is in color and shows the cross and triangular shield in a color scheme other than white and red. In this situation, a refusal should not issue, even if the color claim, mark description, or specimen indicates that the cross and shield appear in the prohibited color scheme. Instead, to address the discrepancy between the drawing and the other information in the application record, the examining attorney must require a corrected color claim, an amended mark description, and/or a matching specimen, as appropriate. In addition, the examining attorney should provide an advisory indicating that the use of the Swiss coat of arms in the white and red color scheme is prohibited by federal law and that, if the applicant amends the drawing to show the cross in white and the shield in red, the mark will be refused under Trademark Act §§1 and 45.

The refusal should not be issued even if the cross is white and the shield is red.

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.

1205.01(d)(i)(E)    Refusals Based on Extrinsic Evidence

If a §1(b), §44, or §66(a) application is refused based solely on extrinsic evidence of applicant’s unlawful use of the Swiss coat of arms, the applicant may overcome the refusal by submitting a verified statement that the applicant has a bona fide intention to use the mark lawfully (i.e., in colors other than white and red). TMEP §§804–804.01(b). For a §1(a) application refused based on extrinsic evidence (or based on the specimen of record), the applicant may overcome the refusal by amending the application filing basis to §1(b), and need only submit the usual verified statement corresponding to that amendment (i.e., that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services, and that the applicant had this intention as of the application filing date). 15 U.S.C. §1051(b)(3)(B);  37 C.F.R. §2.34(a)(2); TMEP §806.03(c). If the specimen submitted with the applicant’s subsequent allegation of use, or with an affidavit or declaration of use under §8 or §71, shows the mark is not in lawful use, the refusal must be reissued.

1205.01(d)(ii)    Refusal Under §2(b): Swiss Flag or Swiss Coat of Arms

Trademark Act §2(b) prohibits registration on the Principal Register or Supplemental Register of a mark that consists of or comprises the flag or coat of arms of a foreign nation. 15 U.S.C.  §1052(b); see TMEP §§1204-1204.05. In determining whether a mark must be refused under §2(b), the relevant question is whether consumers will perceive matter in the mark as a flag or coat of arms. See In re Family Emergency Room LLC, 121 USPQ2d 1886, 1888 (TTAB 2017); TMEP §1204.01(a).

Section 2(b) also prohibits registration of any simulation of a foreign nation’s flag or coat of arms. 15 U.S.C.  §1052(b); see In re Family Emergency Room LLC, 121 USPQ2d at 1887; TMEP §1204.01(a). As previously noted, a "simulation" refers to "something that gives the appearance or effect or has the characteristics of an original item." In re Advance Indus. Sec., Inc., 194 USPQ 344, 346 (TTAB 1977); see TMEP §1204.

Whether particular matter is a simulation of a flag or coat of arms is determined by a visual comparison of the matter and the actual flag or coat or arms. See In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973); TMEP §1204. The focus of the analysis is on the relevant purchasers’ general recollection of the flag or coat of arms, "without a careful analysis and side-by-side comparison." In re Advance Indus. Sec., Inc., 194 USPQ at 346 . See TMEP §1204.01(a) for examples of flag simulations.

The examining attorney should consider the following factors when determining whether matter in a mark will be perceived as the Swiss coat of arms or Swiss flag:

• the colors, if any, that appear in the matter;
• the stylization of the matter and its relationship to other elements in the mark;
• the presence of any words or other designs on the drawing that might create or reinforce the impression that the matter is the Swiss flag or Swiss coat of arms; and
• the presentation and use of the mark on the specimen of record, if one is provided. See In re Family Emergency Room LLC, 121 USPQ2d at 1888; TMEP §1204.01(a).

The determination of whether a refusal under §2(b) must issue should be based on how the mark is displayed in the drawing, described in the application, or used in the specimen of record. See In re Family Emergency Room LLC, 121 USPQ2d at 1888. Extrinsic evidence of applicant’s use of the mark should not be considered.

1205.01(d)(ii)(A)    When a Refusal Under §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 Swiss Fed. Act of 21 June 2013 on the Protection of the Swiss Coat of Arms and Other Public Signs (Coat of Arms Protection, CAPA) https://www.fedlex.admin.ch/eli/cc/2015/613/en  (accessed April 19, 2022) (indicating that "[t]he Swiss cross is a white, upright, free-standing cross depicted against a red background, whose arms, which are all of equal size, are one-sixth longer than they are wide" and that "[t]he Coat of Arms of the Swiss Confederation (the Swiss coat of arms) is a Swiss cross in a triangular shield"); Britannica.com, flag of Switzerland, https://www.britannica.com/topic/flag-of-Switzerland  (accessed April 19, 2022); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/flag  (accessed April 19, 2022). 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.

1205.01(d)(ii)(B)    When an Advisory Should Be Provided

If sending an Office action for other reasons, the examining attorney should provide an advisory regarding the potential refusal under §2(b) when all of the following conditions exist:

• the mark contains an upright equilateral cross on a square, a rectangle, or a triangular shield that is not significantly stylized, altered, or merged with other elements in the mark;
• the drawing is not in color;
• the application record does not contain a specimen or any other indication of the colors that appear in the mark as it is actually used; and
• there is no wording or other indicia in the mark that would create or reinforce the impression that the mark contains the Swiss flag or the Swiss coat of arms.

If possible, the examining attorney should provide the advisory in the initial Office action. The advisory should indicate that a refusal under Trademark Act §2(b) will issue if the specimen submitted with an allegation of use (for §1(b) applications) or a §8 or §71 affidavit or declaration of use (for §44 and §66(a) applications) shows the cross and square/rectangle/shield in a white and red color scheme. Failure to provide an advisory does not preclude a refusal of registration in a subsequent Office action or a refusal of a §8 or §71 affidavit or declaration. Cf. TMEP §1202.

1205.01(d)(ii)(C)    When a Refusal Under §2(b) Should Not Be Issued

Even if the mark contains an upright equilateral cross on a square, a rectangle, or a triangular shield (or simulation thereof), a §2(b) refusal should not be issued if any of the following conditions exist:

• the flag or coat of arms shown in the mark is sufficiently altered, stylized, or merged with other elements in the mark, so as to create a distinct commercial impression;
• the drawing is not in color, there is no color claim, the mark description does not reference color (or there is no mark description), and the application contains a color specimen that shows the relevant matter in a color scheme other than white and red; or
• the drawing is in color and shows the cross and square/rectangle/shield in a color scheme other than white and red. In this situation, a refusal should not issue, even if the color claim, mark description, or specimen indicates that the cross and square/rectangle/shield appears in the prohibited color scheme. Instead, to address the discrepancy between the drawing and the other information in the application record, the examining attorney must require a corrected color claim, an amended mark description, and/or a matching specimen, as appropriate. In addition, the examining attorney should provide an advisory indicating that, under §2(b), the Swiss flag and Swiss coat of arms may not be registered as a trademark or service mark and that, if the applicant amends the drawing to show the cross in white and the square, rectangle, or shield in red, the mark will be refused under Trademark Act §2(b).

1205.01(d)(ii)(D)    Applicant’s Response to Refusal

Section 2(b) provides an absolute bar to registration. See TMEP §1204.04(a). Thus, a disclaimer of the relevant matter will not overcome the refusal, nor will a claim of acquired distinctiveness under §2(f) or an amendment to the Supplemental Register. Id.

In addition, if registration is refused because the drawing or specimen actually shows the cross and square/rectangle/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 flag or 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, an applicant may overcome a §2(b) refusal as follows:

• Amending the Colors in the Drawing. If registration is refused because the drawing shows the relevant matter in the prohibited color scheme, amending the drawing to show the matter in another color scheme—either in different colors or in no particular colors (i.e., black and white or gray scale)—will usually be sufficient to overcome the refusal. However, amending to a non-color drawing showing the mark in black and white or gray scale will not overcome the refusal if there is other matter in the mark (e.g., wording such as "Swiss" or "Switzerland") that creates or reinforces the impression that the cross and square/rectangle/shield design in the mark is the Swiss flag or the Swiss coat of arms.
• Generally, amending the colors in the cross and square/rectangle/shield element in a mark to overcome a §2(b) refusal will not result in a material alteration of the mark. If the colors in the drawing are changed, 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 relevant matter 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 relevant matter in the prohibited color scheme, the applicant may obviate the refusal by submitting a color specimen showing use of the relevant matter in the mark in colors other than white and red.
• Deleting the Coat of Arms or Flag from the Drawing. Section 1 applicants may also overcome a §2(b) refusal by deleting the unregistrable flag or coat of arms, but only if the matter is separable from other elements in the mark (e.g., the flag design is separated from, or is used as a background for, other matter in the mark) and the remaining matter is registrable. If the flag or coat or arms is deleted from the drawing, any specimen showing the mark with the deleted matter should still be considered to match the drawing. See TMEP §1204.04(b).
• Amending the Filing Basis to §1(b). If registration of the mark is refused under §2(b) because the specimen of record shows the relevant matter in white and red, applicant may amend the application filing basis to §1(b), in which case the examining attorney should withdraw the refusal. However, the refusal must be reissued if the specimen submitted with applicant’s subsequent allegation of use shows the relevant matter in the prohibited color scheme.

For applications based on §44 or §66(a), applicants generally may not make amendments to the mark; thus, the option to delete the Swiss flag or Swiss coat of arms is not available. 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§ 807.12(b), 1011.01, 1904.02(j). However, if a §44 or §66(a) application presents the mark in color, but there is no corresponding color claim in the foreign or international registration, the applicant may submit a statement that no claim of color is made with respect to the foreign or international registration and amend the drawing to a black-and-white reproduction of the mark. See TMEP §§ 1011.01, 1904.02(k). In this manner, the applicant may overcome the §2(b) refusal, provided there are no other Swiss indicia in the mark that would create the perception that the black-and-white or gray-scale coat of arms or flag in the mark is the Swiss coat of arms or Swiss flag.

1205.01(d)(iii)    Other Refusals

If a mark containing matter that would be perceived as the Swiss coat of arms or Swiss flag also includes other Swiss indicia, such as the wording "Switzerland" or "Swiss," or foreign equivalents, the examining attorney should consider whether the primary significance of the mark as a whole is geographic. If so, a refusal under Trademark Act §2(e)(2) (geographically descriptive) or §2(a)/§2(e)(3) (geographically deceptive/primarily geographically deceptively misdescriptive) may be appropriate, in addition to refusals under §§1 and 45 and/or §2(b). For detailed information regarding the examination procedures relating to geographic refusals, see TMEP §§1210-1210.07(b).

Like the Swiss coat of arms and the Swiss flag, the Red Cross features an upright equilateral cross and the colors red and white. However, the color scheme in the Red Cross is reversed, displaying the cross in red and the background in white. The Red Cross is also protected by federal statute, and marks containing this matter may be subject to refusals under Trademark Act §§1 and 45 (not in lawful use) and §2(a) (false suggestion of a connection with the American National Red Cross). See 18 U.S.C. §706.  If the mark contains an equilateral cross, but the application does not provide a clear indication of the colors that appear in the mark, examining attorneys should consider whether a refusal on the basis that the mark appears to contain the Red Cross may be appropriate. For additional information, see TMEP §1205.01.

Refusals for failure to function as a trademark or service mark, 15 U.S.C. §§1051, 1052, 1053, 1127  (see also TMEP §§1202, 1301.02(a)), or for likelihood of confusion, 15 U.S.C. §1052(d),  may also apply to these marks.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

1205.02    Article 6ter of the Paris Convention

The United States is a member of the Paris Convention for the Protection of Industrial Property, as revised at Stockholm on July 14, 1967, the members of which constitute a Union for the protection of industrial property. Paris Convention for the Protection of Industrial Property art. 6ter, Mar. 20, 1883, http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html.

Under Article 6ter of the Paris Convention, the contracting countries have agreed to refuse or to invalidate the registration, and to prohibit the unauthorized use as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems of the member countries, official signs and hallmarks indicating control and warranty adopted by member countries, and any imitation from a heraldic point of view. The provision applies equally to armorial bearings, flags, other emblems, abbreviations, and names of international intergovernmental organizations of which one or more countries of the Union are members, except for those that are already the subject of international agreements in force, intended to ensure their protection (e.g., "Red Cross" and emblems protected by the Geneva Convention of August 12, 1949).

Under Article 6ter, each member country or international intergovernmental organization (IGO) may communicate armorial bearings, emblems, official signs and hallmarks indicating warranty and control, and names and abbreviations of IGOs to the IB, who will transmit the communications to the other member countries. Within twelve months from receipt of the notification, a member country may transmit its objections, through the IB.

When the USPTO receives notifications from the IB under Article 6ter, the USPTO searches its records for conflicting marks, although the requests are not subjected to a full examination by an examining attorney or published for opposition. If the USPTO determines that a designation should be entered into the USPTO search records to assist USPTO examining attorneys, the designation is assigned a serial number in the "89" series code (i.e., serial numbers beginning with the digits "89," sometimes referred to as "non-registrations"). Information about the designation should be discovered in an examining attorney’s search.

Refusal of Marks Notified Under Article 6ter

Depending on the nature and use of the mark, §§2(a) and 2(b) of the Trademark Act, 15 U.S.C. §§1052(a)  and 1052(b), may bar registration of marks comprised in whole or in part of designations notified pursuant to Article 6ter and to which the United States has transmitted no objections. A refusal under §2(d) of the Trademark Act is not appropriate. The issue is not whether the marks are confusingly similar, but whether registration of the mark would violate §§2(a) or 2(b) of the Trademark Act.

For example, it may be appropriate for the examining attorney to refuse registration under §2(a) of the Act on the ground that the mark comprises matter that may falsely suggest a connection with a national symbol of a member country or an international intergovernmental organization. See TMEP §1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203-1203.03(f). It may be appropriate to refuse registration under §2(b) of the Act if the proposed mark comprises a flag, coat of arms, or other similar insignia. See TMEP §1204. In some instances, it may be appropriate to refuse registration under §§1, 2 (preamble), and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark. For service mark applications, §3 of the Act, 15 U.S.C. §1053,  should also be cited as a basis for refusal.

1205.03    Native American Tribal Insignia

Various federally and state-recognized Native American tribes have identified a particular insignia as their official tribal insignia. When a federally or state-recognized Native American tribe submits its official insignia to the USPTO, it is assigned a serial number in the "89" series code (i.e., serial numbers beginning with the digits "89," sometimes referred to as "non-registrations") and entered into the USPTO search records to assist examining attorneys and applicants. There is no legal requirement to submit such an insignia to the USPTO. Therefore, the search records include only the insignia of federally and state-recognized Native American tribes that choose to submit their insignia.

When the USPTO receives a request to enter an insignia, the USPTO complies if the request is made by a federally or state-recognized Native American tribe and includes certain required information. The USPTO does not investigate whether the insignia truly is the official insignia of the tribe.

Inclusion of the insignia in the search records aids in the examination of applications for trademark registration. Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),  disallows the registration of marks that falsely suggest a connection with a non-sponsoring person or institution, including a Native American tribe. See In re Shinnecock Smoke Shop 571 F. 3d 1171, 91 USPQ 2d 1218 (Fed. Cir. 2009); In re White, 73 USPQ2d 1713 (TTAB 2004). Thus, if a mark that a party wishes to register as a trademark resembles an insignia of a Native American tribe, it may falsely suggest a connection with the tribe.

1206    Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent

Section 2(c) of the Trademark Act, 15 U.S.C §1052(c), absolutely bars the registration of these marks on either the Principal Register or the Supplemental Register. See 15 U.S.C §1052(f), 1091(a). The provision "recognizes the right of privacy and publicity that a living person has in his or her identity and protects consumers against source deception." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *10-11 (TTAB 2020).

The purpose of requiring the consent of a living individual to the registration of his or her name, signature, or portrait is "to protect rights of privacy and publicity that living persons have in the designations that identify them." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *7-8 (citing In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010) ; Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979)); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1376 n.8, 217 USPQ 505, 509 n.8 (Fed. Cir. 1983). See TMEP §1203.03 regarding of the right to control the use of one’s identity, which underlies part of §2(a) as well as §2(c).

Section 2(c) does not apply to marks that comprise matter that identifies deceased persons, except for a deceased president of the United States during the life of the president’s widow. See 15 U.S.C.  §1052(c); In re Masucci, 179 USPQ 829 (TTAB 1973) (affirming §2(c) refusal of a mark consisting of the name EISENHOWER, a portrait of President Dwight D. Eisenhower, and the words PRESIDENT EISENHOWER REGISTERED PLATINUM MEDALLION #13 on the ground that the mark comprised the name, signature, or portrait of a deceased United States president without the written consent of his living widow).

"Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8. Specifically, a consent is required only if the individual bearing the name in the mark will be associated with the mark as used with the goods or services because the person is either (1) so well known that the public would reasonably assume a connection between the person and the goods or services, or (2) publicly connected with the business in which the mark is used. Id. at *8 (citing In re Hoefflin, 97 USPQ2d at 1175-76; Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); Martin, 206 USPQ at 933)). See TMEP §1206.02 regarding whether consent is required.

See TMEP §1206.03 regarding when it is necessary for an examining attorney to inquire of the applicant as to whether a name, signature, or portrait in a mark identifies a particular living individual, and §§813.01(a)-(c) regarding the entry of pertinent statements in the record for publishing in the Trademark Official Gazette and including on a registration certificate.

1206.01    Name, Portrait, or Signature of Particular Living Individual

Section 2(c) explicitly pertains to any name, portrait, or signature that identifies a particular living individual, or a deceased president of the United States during the life of the president’s widow.

Does Not Have to Be Full Name. For purposes of §2(c), a "name" does not have to be the full name of an individual. "Section 2(c) applies not only to full names, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the particular name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020) (holding registration of the marks TRUMP-IT MY PACKAGE OPENER MAKE OPENING PACKAGES GREAT and design and TRUMP-IT MY PACKAGE OPENER and design barred under Section 2(c) in the absence of consent to register, because they created a direct association with President Donald Trump); see In re Hoefflin, 97 USPQ2d 1174, 1177-78 (TTAB 2010) (holding registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT barred under §2(c) in the absence of consent to register, because they created a direct association with President Barack Obama); In re Sauer,27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports ball, barred under §2(c) in the absence of consent to register, because BO is the nickname of Bo Jackson, a well-known athlete, and thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); In re Steak & Ale Rests. of Am., Inc., 185 USPQ 447, 448 (TTAB 1975) (holding registration of the mark PRINCE CHARLES for fresh and cooked meat barred under Section 2(c) in the absence of consent to register, because the mark created a direct association with Prince Charles, a well-known member of the English royal family.

Name Could Refer to More Than One Person. The fact that a name appearing in a mark may be the name of more than one person does not negate the requirement for a written consent to registration if the mark identifies, to the relevant public, a particular living individual who is well known or is publicly connected with the business in which the mark is used, or a deceased U.S. president whose spouse is living. See Steak & Ale Rests., 185 USPQ at 447 ("Even accepting the existence of more than one living ‘PRINCE CHARLES’, it does not follow that each is not a particular living individual.").

Portraits. Cases involving portraits include In re McKee Baking Co., 218 USPQ 287 (TTAB 1983) (involving a mark consisting of a sign on which the portrait of a young girl appears below the words LITTLE DEBBIE); In re Masucci, 179 USPQ at 829 (involving a mark containing the name and portrait of President Eisenhower); Garden v. Parfumerie Rigaud, Inc., 34 USPQ 30 (Comm’r Pats. 1937) (involving marks containing the name and portrait of petitioner).

1206.02    Connection with Goods or Services

Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. A consent is required only if the individual bearing the name in the mark will be associated with the mark as used with the goods or services, because the person is either: (1) so well known that the public would reasonably assume a connection between the person and the goods or services, or (2) publicly connected with the business in which the mark is used. In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020) (citing In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ'ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979)). For purposes of §2(c), "publicly connected" means that the named individual is associated in some significant manner with the applicant, is actually connected to the goods or services at issue, or is well known in the relevant field of goods or services, and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual. See In re Sauer, 27 USPQ2d at 1075 (holding registration of a mark containing BO, used in connection with a sports ball, barred by §2(c) in the absence of written consent to register from a well-known athlete nicknamed BO, Bo Jackson), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196 (PTO 1954) (holding registration of REED REEL OVEN barred by §2(c) in the absence of written consent to register from the designer and builder of the ovens, Paul N. Reed); see also TMEP §1206.03. Although there may need to be evidence to show that the consuming public connects lesser-known figures with the manufacturing or marketing of the goods or services at issue, "well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods or services." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (citing In re Hoefflin, 97 USPQ2d at 1177; In re Masucci, 179 USPQ 829, 830 (TTAB 1973)).

The Trademark Trial and Appeal Board stated the following in Martin, 206 USPQ at 933:

[Section] 2(c) was not designed to protect every person from having a name which is similar or identical to his or her name registered as a trademark. Such a scope of protection would practically preclude the registration of a trademark consisting of a name since in most cases there would be someone somewhere who is known by the name and who might be expected to protest its registration. Rather, the Statute was intended to protect one who, for valid reasons, could expect to suffer damage from another’s trademark use of his name. That is, it is more than likely that any trademark which is comprised of a given name and surname will, in fact, be the name of a real person. But that coincidence, in and of itself, does not give rise to damage to that individual in the absence of other factors from which it may be determined that the particular individual bearing the name in question will be associated with the mark as used on the goods, either because that person is so well known that the public would reasonably assume the connection or because the individual is publicly connected with the business in which the mark is used.

In Krause, 76 USPQ2d at 1907-11, the evidence of record showed, among other things, that the cancellation petitioner, Chester L. Krause, formed a sole proprietorship under the name "Krause Publications" for the purpose of publishing coin collecting publications; was subsequently associated for almost fifty years with the respondent Krause Publications Inc., a major publisher of hobby magazines, newspapers, and price guides, as its president and/or chairman; coauthored at least three publications in the field of the study and collecting of coins; conducted a number of lectures on this subject around the country; received awards from national coin- and car-collecting organizations in recognition of his contributions to those fields; was the founder of a car show and swap meet; and had his large collection of cars featured in a film by an organization dedicated to automotive history. The Board found that this evidence established that the petitioner was publicly connected with the fields of coin collecting, car collecting, and publishing activities relating thereto, such that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed by those who have an interest in such fields. Id. at 1910. Thus, as to the goods and services related to those fields, the Board granted the petition to cancel because the mark identified a particular living individual and there was no written consent to register. Id. at 1914. However, the petition to cancel the registration for "entertainment services in the nature of competitions and awards in the field of cutlery," was dismissed because petitioner had not demonstrated that he was publicly connected with the field of cutlery, or that he is so well known by the general public that a connection between petitioner and the mark would be presumed with respect to these services. Id. at 1910, 1911-12, 1914.

If no one with the name of the person identified in the mark is actually connected with the applicant or with the business in which the mark is used, and no person with the name in the mark is generally known such that a connection would be assumed, the mark generally would not be deemed to identify a particular person under §2(c), and consent would not be required. See In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1428 (TTAB 2014) (holding no consent required because applicant's FRANKNDODD mark would be understood by the relevant consuming public as referencing and commenting on the Dodd-Frank Act, rather than as specifically identifying Congressman Barney Frank and Senator Chris Dodd); Martin, 206 USPQ at 933 (holding that §2(c) did not prohibit registration of NEIL MARTIN for men’s shirts, where the individual, although well known in his own professional and social circles, failed to establish that he was so famous as to be recognized by the public in general, or that he is or ever was publicly connected or associated with the clothing field); Brand v. Fairchester Packing Co., 84 USPQ 97 (Comm’r Pats. 1950) (affirming dismissal of a petition to cancel the registration of the mark ARNOLD BRAND for use with fresh tomatoes because nothing in the record indicated that the mark identified the petitioner, Arnold Brand, an attorney specializing in patent and trademark matters, with the tomato business, or that use of the mark would lead the public to make such a connection).

To support a refusal under §2(c) as to a particular class in an application, it is not necessary to demonstrate that the individual is publicly connected with all the goods or services listed in the class. It is enough to show that the individual is publicly connected with at least some of the goods or services in the class. See Krause, 76 USPQ2d at 1911.

1206.03    When Inquiry is Required

Generally, if a mark comprises a name, portrait, or signature that could reasonably be perceived as identifying a particular living individual, and the applicant does not state whether the name or likeness does in fact identify a living individual, the examining attorney must inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name or likeness must be submitted. If there is sufficient evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion regarding whether to issue a §2(c) refusal instead of an inquiry.

Full Name. If a mark contains a full name, consisting of a first name/initial(s) and a surname, the examining attorney must issue an inquiry as to whether the mark comprises the name of a living individual, unless it is clear from the record that the name is not that of a living individual. It is not necessary to establish that the individual is generally known or publicly connected with the business in which the mark is used before making the inquiry. If there is sufficient evidence that the individual is generally known or publicly connected with the business in which the mark is used, the examining attorney may, at his or her discretion, issue a §2(c) refusal rather than an inquiry.

Portrait or Likeness. Generally, if the mark comprises a portrait or likeness that could reasonably be perceived as that of a particular living individual, the examining attorney must issue an inquiry as to whether the mark comprises the likeness of living individual, unless it is clear from the record that the likeness is not that of a living individual. It is not necessary to establish that the individual is generally known or publicly connected with the business in which the mark is used before making the inquiry. If there is sufficient evidence that the individual is generally known or publicly connected with the business in which the mark is used, the examining attorney may, at his or her discretion, issue a §2(c) refusal rather than an inquiry.

Fictitious Character. The examining attorney should not make an inquiry if it is clear from the record, or from the examining attorney’s research, that the matter identifies a fictitious character. For example, no inquiry is necessary as to whether "Alfred E. Neuman," "Betty Crocker," or "Aunt Jemima" is the name of a particular living individual because they are names of well-known fictitious characters. Likewise, no inquiry is necessary as to a design that is obviously that of a cartoon character.

First Name, Pseudonym, Stage Name, Surname, Nickname, or Title. If the mark comprises a first name, pseudonym, stage name, nickname, surname, or title (e.g., "Mrs. Johnson," "The Amazing Jeffrey," or "Aunt Sally"), the examining attorney must determine whether there is evidence that the name identifies an individual who is generally known or is publicly connected with the business in which the mark is used and, as a result, the relevant public would perceive the name as identifying a particular living individual. See TMEP §1206.02 regarding the meaning of "publicly connected."

Whether the relevant public would perceive a first name, pseudonym, stage name, surname, nickname, or title as identifying a particular individual usually depends on whether the particular individual has achieved some public recognition under that name, either generally or in connection with the relevant industry, business entity, goods, or services (e.g., as the inventor of the goods or services, the public face of the company, or a notable user of the products). See In re Sauer, 27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports ball, barred under §2(c) in the absence of consent to register, because BO is the nickname of a well-known athlete and thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196 (PTO 1954) (holding registration of REED REEL OVEN barred by §2(c) in the absence of written consent to register from the designer and builder of the ovens, Paul N. Reed).

Typically, in the absence of fame or public recognition, first names, pseudonyms, stage names, surnames, nicknames, and titles are not necessarily associated with a particular individual. Thus, when the name in a mark is a first name, pseudonym, stage name, surname, nickname, or title, an inquiry is usually unnecessary unless the available information indicates that the relevant public will recognize or perceive the name as identifying a particular individual. See Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) .

Because there must be some indication that the relevant public would actually perceive the name as identifying a particular individual, the mere fact that the name is the first name, pseudonym, stage name, surname, nickname, or title of a living individual associated with the applicant (e.g., an employee, founder, or corporate officer) usually would not, by itself, necessitate an inquiry regarding the name.

Famous Deceased Person or Historical Character. When it appears that the mark comprises the name or likeness of a famous deceased person or historical character, the examining attorney must obtain confirmation from the applicant that the person is in fact deceased, and require that the applicant submit a statement that the name or likeness shown in the mark does not identify a living individual. It is not necessary to print the statement. If the mark comprises a name that is distinctive and well known (e.g., Leonardo da Vinci), the examining attorney may consult with his or her manager regarding foregoing the inquiry. If there is evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion regarding whether to issue a §2(c) refusal instead of an inquiry. See TMEP §§1206 and 1206.04(a) regarding marks that consist of or comprise a name, portrait, or signature of a deceased U.S. president with a living widow.

Statement of Record in Prior Registration. If the applicant claims ownership of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the prior registration includes a statement that the name, portrait, or signature is not that of a living individual, the examining attorney may enter the same statement in the record, even if applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation. See TMEP §§813.01(b) and 1206.05.

1206.04    Consent of Individual or President’s Widow

1206.04(a)    Consent Statement Must Be Written Consent to Registration

Must Be Personally Signed. When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow. 15 U.S.C. §1052(c). The consent must be a written consent to the registration of the identifying matter as a mark, and, in the case of a living individual, must be personally signed by the individual whose name, signature, or likeness appears in the mark. Where the name, signature, or likeness is that of a deceased president, the consent should be signed by the president’s surviving spouse.

Consent to Use is Not Consent to Registration. Consent to use of a mark does not constitute consent to register. See Krause v. Krause Pub'ns, Inc., 76 USPQ2d 1904, 1913 (TTAB 2005) ; Reed v. Bakers Eng'g & Equip. Co., 100 USPQ 196, 199 (PTO 1954) ; Garden v. Parfumerie Rigaud, Inc., 34 USPQ 30, 31 (Comm’r Pats. 1937) ("Permission to use one’s name and portrait in connection with a specified item of merchandise falls far short of consent to register one’s name and portrait as a trade mark for such merchandise generally.") Consent to register a mark that makes no reference to consent to use is acceptable; the USPTO has no authority to regulate use of a mark.

Minors. If the record indicates that the person whose name or likeness appears in the mark is a minor, the question of who should sign the consent depends on state law. If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state in which he or she is domiciled, then the minor may sign the consent. Otherwise, the consent should be signed by a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. If the record indicates that person whose name or likeness appears in the mark is a minor, the examining attorney must inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled. If the minor cannot enter into binding legal obligations, the examining attorney must require consent by the parent or guardian. See TMEP §803.01 regarding the filing of an application in the name of a minor.

1206.04(b)    Consent May Be Presumed From Signature of Application

When a particular individual identified in a mark is also the person who signed the application, his or her consent to registration will be presumed. Alford Mfg. Co. v. Alfred Elecs., 137 USPQ 250, 250 (TTAB 1963) ("The written consent to the registration of the mark ‘ALFORD’ by Andrew Alford, the individual, is manifested by the fact that said person executed the application . . . .") , aff’d, 333 F.2d 912, 142 USPQ 168 (C.C.P.A. 1964); Ex parte Dallioux, 83 USPQ 262, 263 (Comm’r Pats. 1949) ("By signing the application, the applicant here obviously consents. . . ."). Consent may be presumed whenever the person identified has signed the application, even if the applicant is not an individual.

Name of Signatory. Consent to register is presumed if the application is personally signed by the individual whose name appears in the mark, e.g., if the mark is JOHN SMITH and the application is personally signed by John Smith. The examining attorney should not make an inquiry or require a written consent. The examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§813.01(a) and (c). The consent statement must be printed even if the name that appears in the mark is that of the applicant.

Names Must Match. Consent may be presumed only where the name in the mark matches the name of the signatory. If the names do not match, the examining attorney must issue an inquiry. For example, if the name in the mark is J.C. Jones, and the application is signed by John Jones, the examining attorney must inquire whether J.C. Jones is John Jones. If applicant states that J.C. Jones is John Jones, consent is presumed. The statement that J.C. Jones is John Jones may be entered by examiner’s amendment, if appropriate. In such cases, the examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§813.01(a) and (c).

Likeness of Signatory. Consent may also be presumed when the mark comprises the portrait or likeness of the person who personally signs the application. When the mark comprises a portrait, or a likeness that could reasonably be perceived as that of a particular living individual, the examining attorney must make an inquiry, unless the record indicates that the likeness is that of the person who signed the application. If the applicant responds by stating that the likeness is that of the person who signed the application, consent is presumed. No written consent is required, but the examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§ 813.01(a) and (c).

Application Must be Personally Signed. Consent may be presumed only where the individual whose name or likeness appears in the mark personally signs the application. If the application is signed by an authorized signatory, consent to register the name or likeness must be obtained from the individual. This is true even where the name or likeness that appears in the mark is that of the individual applicant.

Section 66(a) Applications. In a §66(a) application, the signed verification is part of the international registration on file at the IB and is not included with the request for extension of protection sent to the USPTO. 37 C.F.R. §2.33(e); TMEP §1904.01(c). The examining attorney is thus unable to determine who signed the verified statement. Therefore, the examining attorney must require a written consent to register, even where the name that appears in the mark is that of the applicant. If the verified statement in support of the request for extension of protection to the United States was personally signed by the individual whose name or likeness appears in the mark, the applicant may satisfy the requirement for a written consent to registration by submitting a copy of the verified statement that is on file with the IB.

1206.04(c)    New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant

An applicant does not have to submit a new consent if a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for the same goods and/or services, or such goods and/or services as would encompass those in the subsequent application. See In re McKee Baking Co., 218 USPQ 287, 288 (TTAB 1983) . In this situation, the applicant only has to: (1) claim ownership of that existing registration; and (2) advise the examining attorney that the consent is of record therein. If the applicant provides the information that the consent is of record in the claimed registration by telephone or email, the examining attorney must enter an appropriate Note to the File in the record. The examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§813.01(a) and (c).

If an applicant has submitted a consent to register in an application that has not matured to registration, a new consent is not required for pertinent companion applications, but the applicant must submit a copy of the consent for each pending application. See In re McKee Baking Co., 218 USPQ at 288; 37 C.F.R. §2.193(g).

See TMEP §§813.01(b) and 1206.05 regarding statements that a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual.

1206.04(d)    Implicit Consent

Consent may sometimes be inferred from the actions of the individual. In re D.B. Kaplan Delicatessen, 225 USPQ 342, 344 (TTAB 1985) (finding consent to the use and registration of the mark D. B. KAPLAN’S DELICATESSEN implicit in the terms of a "buy-out" agreement that relinquished all property rights in the name and forbade its use by the named party in any subsequent business) . However, the mere incorporation of a business or consent to the business’s use of the mark does not constitute implied consent to the registration of the mark. Krause v. Krause Publ'ns, Inc., 76 USPQ2d 1904, 1912 (TTAB 2005) (finding cancellation petitioner did not give implied consent to register when he incorporated a business utilizing his name, sold his stock in the business, and pledged the business's assets, including trademarks, to finance expansion and acquisitions, where there was no evidence that the individual expressly stated that the mark was the property of the corporation or agreed to refrain from use of the name in any subsequent business); In re New John Nissen Mannequins, 227 USPQ 569 (TTAB 1985) (finding consent to register JOHN NISSEN MANNEQUINS not implied from appearance of the name "John Nissen" in a deed of incorporation of applicant’s predecessor under the name "John Nissen Mannequins," nor from existence of foreign registrations for trademarks incorporating the name).

1206.05    Names and Likenesses That Do Not Identify a Particular Living Individual

If it appears that a name, portrait, or signature in a mark may identify a particular living individual but, in fact, the applicant devised the matter as fanciful, or believes it to be fanciful, the applicant may be required to submit a statement to that effect. See TMEP §1206.03 for information as to when an examining attorney should inquire as to whether a name or likeness is that of an individual.

The applicant should explain any additional relevant circumstances. For example, if the matter identifies a certain character in literature, or a deceased historical person, then a statement of these facts in the record may be helpful; however, this information will not be printed in the Official Gazette or on the registration certificate.

No statement should be printed unless the name or portrait might reasonably be perceived as that of a specific living individual. This is true even if the applicant submits an unsolicited statement that a particular name or portrait does not identify a living individual.

Generally, if the name or likeness is such that an inquiry would have been required as to whether it identifies a living individual (see TMEP §1206.03), and the applicant states that the mark does not identify a living individual, then the statement that the name or likeness does not identify a living individual should be printed. See TMEP §813.01(b).

If the applicant owns a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the record for the registration contains a statement that the name or likeness is not that of a living individual, the applicant should claim ownership of the registration and advise the examining attorney that the statement is of record therein. The examining attorney may then enter the same statement in the record for the application, even if applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation.

1207    Refusal on Basis of Likelihood of Confusion, Mistake, or Deception

Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),  is the statutory basis for a refusal to register due to likelihood of confusion with another mark. Section 2(d) applies regardless of whether registration of the mark is sought on the Principal Register or the Supplemental Register.

1207.01    Likelihood of Confusion

In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney’s conclusion that the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. See TMEP §1207.02 regarding the §2(d) provision relating to marks that so resemble another mark as to be likely to deceive, and §1207.03 regarding §2(d) refusals based on unregistered marks (which generally are not issued in ex parte examination).

The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. See, e.g., In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) ("[T]he . . . mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] . . . is precisely the mistake that §2(d) of the Lanham Act seeks to prevent."); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) ("The degree of ‘relatedness’ must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship."); Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) ("[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source."); In re Country Oven, Inc., 2019 USPQ2d 443903, at *2-3 (TTAB 2019) ("[T]he overriding concern is not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer."); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993) ("Although confusion, mistake or deception about source or origin is the usual issue posed under Section 2(d), any confusion made likely by a junior user’s mark is cause for refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation or connection.").

The examining attorney must conduct a search of USPTO records to determine whether the applicant’s mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208-1208.03(c) regarding conflicting marks. The examining attorney must include a copy of the search strategy in the record.

If the examining attorney determines that there is a likelihood of confusion between applicant’s mark and a previously registered mark or marks, the examining attorney refuses registration of the applicant’s mark under §2(d). Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Trademark Act or expiration of a cited registration for failure to renew under §9 of the Act.

Also, if USPTO records indicate that an assignment of the conflicting registration has been recorded, the examining attorney must check the automated records of the Assignment Recordation Branch of the USPTO to determine whether the conflicting mark has been assigned to applicant.

In the seminal case involving §2(d), In re E. I. du Pont de Nemours and Company, 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the U.S. Court of Customs and Patent Appeals, the predecessor court of the U.S. Court of Appeals for the Federal Circuit, discussed the factors relevant to a determination of likelihood of confusion. In setting forth the factors, the court cautioned that, with respect to determining likelihood of confusion, "[t]here is no litmus rule which can provide a ready guide to all cases." Id. at 1361, 177 USPQ at 567. Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. Id. at 1361-62, 177 USPQ at 567-68; see In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)) ("‘Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.’"). Furthermore, the significance or weight of a particular factor may differ from case to case. See Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998, 2020 USPQ2d 10341, at *3 (Fed. Cir. 2020) ("Any single factor may control a particular case.").

Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
• The relatedness of the goods or services as described in the application and registration(s).

See, e.g., Stratus Networks, Inc., 955 F.3d at 999, 2020 USPQ2d 10341, at *5 (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001)); In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); In re Embiid, 2021 USPQ2d 577, at *11 (TTAB 2021) (quoting Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)).

The following factors may also be relevant in an ex parte likelihood-of-confusion determination and must be considered if there is pertinent evidence in the record:

• The similarity or dissimilarity of established, likely-to-continue trade channels.
• The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing (see TMEP §1207.01(d)(vii)).
• The number and nature of similar marks in use on similar goods (see TMEP §1207.01(d)(iii)).
• The existence of a valid consent agreement between the applicant and the owner of the previously registered mark (see TMEP §1207.01(d)(viii)).

See, e.g., In re i.am.symbolic, llc, 866 F.3d at 1325, 1327, 123 USPQ2d at 1749, 1751; du Pont, 476 F.2d at 1361-63, 177 USPQ at 567-69; In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *6-7 (TTAB 2020); In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1158-60, 1161-63 (TTAB 2018); In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-74 (TTAB 2009); Ass’n of the U.S. Army, 85 USPQ2d at 1271-73.

See TMEP §1207.01(d)(ii) regarding the "actual confusion" factor and §1207.01(d)(ix) regarding the "fame of the prior mark" factor.

There is no mechanical test for determining likelihood of confusion and "each case must be decided on its own facts." du Pont, 476 F.2d at 1361, 177 USPQ at 567. In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods or services are related, because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods or services, the presence in the marketplace of a significant number of similar marks in use on similar goods or services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use. For example, in In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) , the Board reversed a refusal to register the mark ANYWEAR (in stylized text), for "footwear," finding no likelihood of confusion with the registered mark ANYWEAR BY JOSIE NATORI (and design), for "jackets, shirts, pants, stretch T-tops and stoles." Given the similarity in the marks and the relatedness of the goods, the Board stated that "under usual circumstances" it would conclude that confusion is likely to occur; however, an "unusual situation" compelled the Board "to balance the similarities between the marks and goods against the facts that applicant already own[ed] a registration for a substantially similar mark for the identical goods, and that applicant’s registration and the cited registration ha[d] coexisted for over five years." Id. at 1399. Applicant’s prior registration of ANYWEARS (in standard characters) for goods including footwear was "substantially similar" to the applied-for mark ANYWEAR for the same goods, and the prior registration had achieved incontestable status "and thus [was] not subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion." Id. Basing its decision on the thirteenth du Pont factor, which "relates to ‘any other established fact probative of the effect of use,’" the Board determined that this factor outweighed the others and confusion was unlikely. Id. at 1399-1400 (quoting du Pont, 476 F.2d at 1361, 177 USPQ at 567).

In view of Strategic Partners, when determining whether the coexistence of the applicant’s prior registration with another party’s registration weighs against citing the latter registration in a §2(d) refusal of the applicant’s applied-for mark, the examining attorney should consider the following: (1) whether the applicant’s prior registered mark is the same as the applied-for mark or is otherwise not meaningfully different; (2) whether the identifications of goods or services in the application and the applicant’s prior registration are identical or identical in relevant part; and (3) the length of time the applicant’s prior registration has co-existed with the registration being considered as the basis for the §2(d) refusal. See id. at 1400; see also In re Country Oven, Inc., 2019 USPQ2d 443903, at *16-18 (citing TMEP §1207.01) (finding applicant’s over five-year-old prior registration was for different services than in the application at issue, such that its coexistence with the cited registration did not weigh against a finding of likelihood of confusion); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1748 (TTAB 2018) (finding applicant’s over five-year-old prior registration of a partially similar mark was a neutral factor in the §2(d) analysis, because the applied-for mark was more similar to the cited registered mark than applicant’s previously registered mark). The duration of coexistence is not dispositive as to whether a §2(d) refusal should issue; instead, this du Pont factor should be considered together with all the other relevant du Pont factors. See In re Strategic Partners, Inc., 102 USPQ2d at 1400; cf. In re Embiid, 2021 USPQ2d 577, at *43-44 (distinguishing Strategic Partners and finding that the mark in applicant’s prior registration is meaningfully different from the applied-for mark and has been registered for fewer than five years); In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 (TTAB 2017) (distinguishing Strategic Partners and finding that the 3½-year coexistence of applicant’s prior registration and the cited registration was a relevant consideration but did not outweigh the other relevant du Pont factors). However, where the registered and applied-for marks were substantially similar and the goods were identical, the five-years coexistence in Strategic Partners supported this du Pont factor, outweighing an otherwise strong likelihood-of-confusion showing. In re Strategic Partners, Inc., 102 USPQ2d at 1399-1400.

The determination of likelihood of confusion under §2(d) in an intent-to-use application under §1(b) of the Trademark Act does not differ from the determination in any other type of application.

1207.01(a)    Relatedness of the Goods or Services

In assessing the relatedness of the goods or services, the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *44 (TTAB 2022) (quoting L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1440 (TTAB 2012)); In re House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)). If the marks of the respective parties are identical or virtually identical, the relationship between the goods or services need not be as close to support a finding of likelihood of confusion as would be required if there were differences between the marks. In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) ("Where identical marks are involved, . . . the degree of similarity between the goods and services that is required to support a finding of likelihood of confusion declines.") (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2011), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); In re Shell Oil Co., 992 F.2d at 1207, 26 USPQ2d at 1689 ("even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source"); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009).

In some instances, because of established marketing practices, the use of identical marks on seemingly unrelated goods or services could result in a likelihood of confusion. See In re Sloppy Joe’s Int’l, Inc., 43 USPQ2d 1350, 1356 (TTAB 1997) ("[T]he licensing of the names and/or likenesses of well known persons for use on various goods and services is a common practice."); In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986) ("The licensing of commercial trademarks for use on ‘collateral’ products (such as clothing, glassware, linens, etc.), that are unrelated in nature to those goods or services on which the marks are normally used, has become a common practice in recent years.").

1207.01(a)(i)    Goods or Services Need Not Be Identical

In a §2(d) determination, the goods or services do not have to be identical or even competitive to find a likelihood of confusion. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *5 (TTAB 2020) (citing In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010)); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009). The issue is not whether the goods and/or services will be confused with each other, but rather whether consumers would be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) ("[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis."); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *5 (citing L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984)). The goods or services of the applicant and the registrant need only be related in some manner and/or the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1082-87, 56 USPQ2d 1471, 1472-76 (Fed. Cir. 2000) (holding ON-LINE TODAY for Internet connection services and ONLINE TODAY for an electronic publication likely to cause confusion); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding MARTIN’S for wheat bran and honey bread, and MARTIN’S for cheese, likely to cause confusion); Weider Publ'ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347 (TTAB 2014) (holding SHAPES for a variety of beauty salon, day spa, and health spa services likely to cause confusion with SHAPE for magazines where the services are of the type normally featured in the magazines); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1433 (TTAB 2013) (holding GOTT LIGHT for various water beverages likely to cause confusion with GOTT and JOEL GOTT for wine); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011) (holding composite marks containing the word TOTAL for yogurt and other products likely to cause confusion with the mark TOTAL for ready-to-eat breakfast cereal); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion); L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) (holding ENYCE for custom automotive accessories, and ENYCE for various urban lifestyle clothing items and accessories, likely to cause confusion); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion).

Conversely, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion may not be likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d at 1371, 101 USPQ2d at 1723 (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting "there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source" though both were offered under the COACH mark); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); In re Thor Tech, Inc., 113 USPQ2d 1546, 1551 (TTAB 2015) (holding use of identical marks for towable trailers and trucks not likely to cause confusion given the difference in the nature of the goods and their channels of trade and the high degree of consumer care likely to be exercised by the relevant consumers).

1207.01(a)(ii)    Establishing Relatedness of Goods to Services

It is well recognized that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (finding clothing and sports apparel retail services related as "confusion is likely where one party engages in retail services that sell goods of the type produced by the other party"); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025-26 (Fed. Cir. 1988) (holding BIGG’S (finding furniture and retail grocery and general merchandise store services related); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (C.C.P.A. 1961) (finding catering food services related to smoked and cured meats); In re Country Oven, Inc., 2019 USPQ2d 443903, at *13-14 (TTAB 2019) (finding bread buns and retail bakery shops related); In re United Serv. Distribs., Inc., 229, 239-40 USPQ 237 (TTAB 1986) (finding skin cream and distributorship services in the field of health and beauty aids related); In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986) (finding clothing and restaurant services related); In re U.S. Shoe Corp., 229 USPQ 707, 708 (TTAB 1985) (finding retail women’s clothing store services uniforms related); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433, 435 (TTAB 1983) (refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Corinthian Broad. Corp. v. Nippon Elec. Co., Ltd., 219 USPQ 733, 736 (TTAB 1983) (finding transmitters and receivers of still television pictures related to television broadcasting services).

When the goods and services in question are well known or otherwise generally recognized as having a common source of origin, the burden of establishing relatedness is easier to satisfy. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014). For example, relatedness would generally be recognized when the services clearly include or encompass the goods in the identification, such as when the services are "brewpubs" and the goods are "beer" or when the services are "electronic transmission of data and documents via computer terminals" and the goods are "facsimile machines, computers, and computer software." In re Coors Brewing Co., 343 F.3d 1340, 1347, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002).

However, when the relatedness of the goods and services is not evident, well known, or generally recognized, "something more" than the mere fact that the goods and services are used together must be shown. In re St. Helena Hosp., 774 F.3d at 754, 113 USPQ2d at 1087 (finding that substantial evidence did not support relatedness of hospital-based residential weight and lifestyle program and printed materials dealing with physical activity and fitness). Therefore, when comparing services such as "restaurant services" with less apparently related goods such as "beer," or "cooking classes" with "kitchen towels," "something more"—beyond the fact that the goods are used in the provision of the services—must be shown to indicate that consumers would understand such services and goods to emanate from the same source. Although the Court in Coors found evidence of "a few registrations" covering both the goods and services at issue insufficient, see In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063, examples of actual use of a mark for both the goods and services at issue and/or evidence of a large number of third-party registrations covering both the goods and services at issue may suffice. When such evidence is not readily available through searches of electronic resources, examining attorneys should consider issuing an information request under 37 C.F.R. §2.61(b), asking whether the applicant provides both the goods and services at issue and inquiring whether the applicant is aware of others who provide both the goods and services at issue, and if so, requesting additional information about them.

1207.01(a)(ii)(A)    Food and Beverage Products Versus Restaurant Services

While likelihood of confusion has often been found where similar marks are used in connection with both food or beverage products and restaurant services, there is no per se rule to this effect. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 768, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001) . Thus, the relatedness of such goods and services may not be assumed and the evidence of record must show " something more" than that similar or even identical marks are used for food products and for restaurant services. In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (quoting Jacobs v. Int'l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (C.C.P.A. 1982) ); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).

In Coors, the examining attorney introduced evidence from several sources discussing the practice of some restaurants to offer private label or house brands of beer; evidence that brewpubs who brew their own beer often feature restaurant services; and copies of several third-party registrations showing that a single mark had been registered for both beer and restaurants services. 343 F.3d at 1345, 68 USPQ2d at 1063. However, applicant countered with evidence that while there are about 1,450 brewpubs and microbreweries in the United States, there are over 800,000 restaurants, which means that brewpubs and microbreweries account for only about 18 one-hundredths of one percent of all restaurants. Id. at 1346, 68 USPQ2d at 1063. Noting that "[t]here was no contrary evidence introduced on those points," the court found that:

While there was evidence that some restaurants sell private label beer, that evidence did not suggest that such restaurants are numerous. And although the Board had before it a few registrations for both restaurant services and beer, the very small number of such dual use registrations does nothing to counter Coors’ showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark. Thus, the evidence before the Board indicates not that there is a substantial overlap between restaurant services and beer with respect to source, but rather that the degree of overlap between the sources of restaurant services and the sources of beer is de minimis. We therefore disagree with the Board’s legal conclusion that Coors’ beer and the registrant’s restaurant services are sufficiently related to support a finding of a likelihood of confusion.

Id. at 1346, 68 USPQ2d at 1063–64.

In the following cases, the Board found the "something more" requirement to be satisfied: Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1060 (TTAB 2017) (holding TAO VODKA for alcoholic beverages likely to cause confusion with the mark TAO for restaurant and nightclub services where the record showed that petitioner used the TAO mark to promote alcoholic beverages, its primary source of revenue, and that its menus featured beverages with TAO-formative names, amongst other business practices linking the TAO mark with alcohol, which met the requisite "something more" to establish that the goods and services were related); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050-51 (TTAB 2012) (holding COLOMBIANO COFFEE HOUSE, for providing food and drink, likely to cause confusion with the registered certification mark COLOMBIAN, for coffee, given the inclusion of COFFEE HOUSE in applicant’s mark, third-party registrations covering both restaurant or café services and coffee beverages, and because coffee houses specialize in coffee beverages); In re Opus One Inc., 60 USPQ2d at 1814-16 (holding use of OPUS ONE for both wine and restaurant services likely to cause confusion, where the evidence of record indicated that OPUS ONE is a strong and arbitrary mark, that it is common in the industry for restaurants to offer and sell private label wines named after the restaurant, and that registrant’s wines were served at applicant’s restaurant); In re Comexa Ltda., 60 USPQ2d 1118, 1123 (TTAB 2001) (holding AMAZON and parrot design for chili sauce and pepper sauce and AMAZON for restaurant services likely to cause confusion, based on, inter alia, 48 use-based third-party registrations showing registration of the same mark for both sauces and restaurant services, and the determination that "of all food products[,] sauces . . . are perhaps the ones most likely to be marketed by the restaurants in which those items are served"); In re Azteca Rest. Enters., 50 USPQ2d 1209, 1211 (TTAB 1999) (holding AZTECA MEXICAN RESTAURANT for restaurant services and AZTECA (with and without design) for Mexican food items likely to cause confusion, where the AZTECA MEXICAN RESTAURANT mark itself indicated that the relevant restaurant services featured Mexican food and the evidence showed that the goods at issue "are often principal items of entrees served by . . . Mexican restaurants"); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (holding GOLDEN GRIDDLE for table syrup and GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services likely to cause confusion, based on third-party registration evidence showing that entities offering restaurant services may also offer a variety of goods under the same mark, as well as findings that "restaurants frequently package certain of their products for retail sale" and that the GOLDEN GRIDDLE PANCAKE HOUSE mark itself suggests that the relevant restaurant services feature pancakes and pancake syrup); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB) (holding use of applied-for mark, MUCKY DUCK and duck design, for mustard, and registered mark, THE MUCKY DUCK and duck design, for restaurant services, likely to cause confusion, in view of the substantial similarity of the marks and the "unique and memorable nature" of registrant’s mark, and given that "mustard is . . . a condiment which is commonly utilized in restaurants by their patrons" and that "restaurants sometimes market their house specialties, including items such as salad dressings, through retail outlets"), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Cf. In re Giovanni Food Co., 97 USPQ2d at 1991 (finding the Office had not met its burden of proving likelihood of confusion where the marks were JUMPIN’ JACKS for barbeque sauce and JUMPIN JACK’S for catering services, because evidence indicating that some restaurants also provide catering services and sell barbeque sauce was not sufficient to establish catering services alone are related to barbeque sauce); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1478 (TTAB 1987) (holding use of applicant’s mark, STEVE’S and design comprising hot dog characters, for restaurants featuring hot dogs, and registrant’s mark STEVE’S, for ice cream, not likely to cause confusion, where the marks differed and there was no evidence of record that applicant made or sold ice cream or that "any one business makes and sells ice cream under the same mark in connection with which it renders restaurant services").

1207.01(a)(iii)    Reliance on Identification of Goods/Services in Registration and Application

The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application and cited registration. See, e.g., B & B Hardware, Inc. v. Hargis Inds., Inc., 135 S. Ct. 1293, 1300 (2015) (recognizing that an "applicant’s right to register must be made on the basis of the goods described in the application"); In re Detroit Athletic Co., 903 F.3d 1297, 1308, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1370, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Sys., Inc. v. Hous. Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Com., N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *5 (TTAB 2020); New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *13 (TTAB 2020); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1500 (TTAB 2010).

If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); New Era Cap Co., 2020 USPQ2d 10596, at *15-16 (citing SquirtCo v. Tomy Corp., 697 F.2d 1038, 1042-43, 216 USPQ 937, 940 (Fed. Cir. 1983); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)) ("the Board may not read limitations into [the] unrestricted registration or [] application"); see also B & B Hardware, Inc. v. Hargis Inds., Inc., 135 S. Ct. 1293, 1300 (2015) (explaining that "if an application does not delimit any specific trade channels of distribution, no limitation will be applied" (cleaned up)). Therefore, if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods. See, e.g., In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (noting that, where registrant’s goods are broadly identified as "computer programs recorded on magnetic disks," without any limitation as to the kind of programs or the field of use, it must be assumed that registrant’s goods encompass all such computer programs, including computer programs of the type offered by applicant, that they travel in the same channels of trade normal for such goods, and that they are available to all classes of prospective purchasers of those goods); In re Diet Ctr., Inc., 4 USPQ2d 1975 (TTAB 1987) (noting that, although applicant had limited its identification to indicate that its goods were sold only through franchised outlets offering weight-reduction services, the cited registration’s identification contained no limitations as to trade channels or classes of customers and thus it must be presumed that registrant’s goods travel through all the ordinary channels of trade).

Similarly, there may be a likelihood of confusion where an applicant identifies its goods or services so broadly that the identification encompasses the goods or services identified in the registration of a similar mark. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1413, 1415 (TTAB 2018) (holding POPULACE and design for computer software intended for travel and destination marketing organizations and travel marketing professionals, and POPULACE (stylized) for computer software for visualizing the popularity of places in real time with an underlying map capability for navigation sold only as business to consumer software and not as "business to business" software, likely to cause confusion); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (holding CLUB PALMS MVP for casino services, and MVP for casino services offered to preferred customers identified by special identification cards, likely to cause confusion); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (holding RESPONSE for banking services, and RESPONSE CARD for banking services rendered through 24-hour teller machines, likely to cause confusion).

In addition, language seeking to limit otherwise identical, or highly similar, goods or services may not be sufficient to distinguish them so as to avoid a likelihood of confusion. See In re i.am.symbolic, llc, 866 F.3d 1315, 1326, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (affirming the Board's finding that an identification restricting the goods to those "associated with William Adams, professionally known as ‘will.i.am,’" imposed no meaningful limitation on the nature of the goods or the trade channels or classes of purchasers of the goods); Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190-93 (TTAB 2014) (finding that although opposer’s clothing items were limited by the wording "college imprinted" and the applicant’s identical or highly similar items were limited by the wording "professional baseball imprinted," these restrictions did not distinguish the goods, their trade channels, or their relevant consumers in any meaningful way).

An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods. See, e.g., In re FCA US LLC, 126 USPQ2d 1214, 1217 (TTAB 2018); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) ; In re Bercut-Vandervoort & Co., 229 USPQ at 764–65; see also In re Detroit Athletic Co., 903 F.3d at 1308, 128 USPQ2d at 1052 ("The third DuPont factor—like the second factor—must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.").

In cases where the terminology in an identification is unclear or undefined, the Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to show that the registrant’s identification has a specific meaning to members of the trade. See, e.g., In re Thor Tech, Inc., 90 USPQ2d at 1638 & n.10 (noting that, although extrinsic evidence may not be used to limit or restrict the identified goods, it is nonetheless proper to consider extrinsic evidence in the nature of dictionary entries to define the terminology used to describe the goods); In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (noting that, "when the description of goods for a cited registration is somewhat unclear . . . it is improper to simply consider that description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade.")

1207.01(a)(iv)    No "Per Se" Rule

The facts in each case vary and the weight to be given each relevant du Pont factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (regarding alcoholic beverages); Info. Res. Inc. v. X*Press Info. Servs., 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171–72 (TTAB 1987) (regarding food products); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984) (regarding clothing); see also M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 1383, 78 USPQ2d 1944, 1947–48 (Fed. Cir. 2006) (noting that relatedness between software-related goods may not be presumed merely because the goods are delivered in the same media format and that, instead, a subject-matter-based mode of analysis is appropriate).

1207.01(a)(v)    Expansion-of-Trade Doctrine

The expansion-of-trade doctrine has limited application in ex parte proceedings, and the Trademark Trial and Appeal Board has indicated that "[i]t is not necessary, . . . in the context of an ex parte proceeding, for the Office to show that the owner of the particular registration that has been cited against the application has expanded or will expand its goods or services." In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1584 & n.4 (TTAB 2007) ; see also In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1266 (TTAB 2011) .

The doctrine is typically applied in inter partes proceedings where an opposer claims that its priority of use of a mark with respect to its goods/services should be extended to include applicant’s goods/services because they are in the natural scope of expansion of opposer’s goods/services. See Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1119 (TTAB 2015) (noting that the "natural zone of expansion" doctrine normally applies in inter partes cases in the context of the parties’ dueling claims of priority); 1st USA Realty Prof’ls, 84 USPQ2d at 1584. However, in the ex parte context, the normal relatedness analysis is applied:

[W]e look at the question of the relatedness of the services identified in applicant's application and those in the cited registration based on whether consumers are likely to believe that the services emanate from a single source, rather than whether the Examining Attorney has shown that the registrant . . . has or is likely to expand its particular business to include the services of applicant.

Id.

To the extent the expansion-of-trade doctrine does apply in ex parte cases, it "is considered through a traditional relatedness of goods and services approach." Id. at 1584 n.4.

1207.01(a)(vi)    Evidence Showing Relatedness of Goods or Services

The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). Evidence of relatedness may include news articles and/or evidence from computer databases showing that the relevant goods or services are used together or used by the same purchasers; advertisements showing that the relevant goods or services are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both applicant’s goods or services and the goods or services listed in the cited registration. E.g., In re Ox Paperboard, LLC 2020 USPQ2d 10878, at *5 (TTAB 2020) (citing In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014); In re Country Oven, Inc., 2019 USPQ2d 443903, at *4-5 (TTAB 2019). See TMEP §1207.01(d)(iii) and cases cited therein regarding the probative value of third-party registrations.

The identification of goods or services in the subject application and in the cited registration(s) may in itself constitute evidence of the relatedness of the goods or services. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding the Board erred in concluding that there was insufficient evidence of relatedness, because it "did not consider the important evidence already before it, namely the ITU application and [opposer’s] registrations").

1207.01(b)    Similarity of the Marks

Under In re E. I. du Pont de Nemours & Company, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) , the first factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether "the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties." In re i.am.symbolic, LLC, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012)); San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 2-3 (C.C.P.A. 1977); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *4-5 (TTAB 2020).

When comparing the marks, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (citing Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202-03, 22 USPQ2d 1542, 1544-45 (Fed. Cir. 1992); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). However, the analysis is based on the marks as depicted in the respective application and registration, without regard to whether the marks will appear with other marks, such as house marks, or other elements when used. See In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993) (indicating that applicant’s assertions that the applied-for mark would appear with applicant’s house mark were not considered in the likelihood-of-confusion determination); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) ("[W]e do not consider how Applicant and Registrant actually use their marks in the marketplace, but rather how they appear in the registration and the application. We must compare the marks as they appear in the drawings, and not on any labels that may have additional wording or information."); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (rejecting applicant’s argument that, because its mark would appear along with its house mark and other distinguishing matter, the marks at issue were not confusingly similar); see also Cunningham v. Laser Golf Corp., 222 F. 3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) ("Registrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.").

In evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *4 (citing In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018); see In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (C.C.P.A. 1969) (many consumers "may have but dim recollections from having previously seen or heard one or the other of the involved marks.").

The Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.

In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 750-51 (Fed. Cir. 1985) (footnotes omitted) (citations omitted); see Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).

When the goods or services are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Century 21 Real Est. Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992); Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at *27 (TTAB 2021); New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *14 (TTAB 2020); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6 (TTAB 2019) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d at 1370, 101 USPQ2d at 1722); In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).

1207.01(b)(i)    Word Marks

The points of comparison for a word mark are appearance, sound, meaning, and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (citing In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ). Similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a determination that confusion is likely even if the goods are identical or closely related; rather, taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).

1207.01(b)(ii)    Similarity In Appearance

Similarity in appearance is one factor to consider when comparing the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) . Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding TMM confusingly similar to TMS); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (affirming Board’s holding that source confusion is likely where COMMCASH and COMMUNICASH are used in connection with identical banking services); Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (finding AUDIO BSS USA and design similar in appearance to BOSS AUDIO SYSTEMS (stylized)); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding TRUCOOL and TURCOOL confusingly similar in appearance); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (finding NEWPORTS and NEWPORT to be essentially identical in appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX and LUTEXAL insufficient to avoid source confusion).

1207.01(b)(iii)    Comparing Marks that Contain Additional Matter

Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial impression created by each mark.

Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1304, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (affirming TTAB’s finding that the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are nearly identical in terms of sound, appearance and commercial impression, and noting that, while "the words ‘Co.’ and ‘Club’ technically differentiate the marks, those words do little to alleviate the confusion that is likely to ensue"); Stone Lion Cap. Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1322 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (affirming TTAB’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB’s finding that applicant’s mark, ML, likely to be perceived as a shortened version of registrant's mark, ML MARK LEES (stylized), when used on the same or closely related skin-care products); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (affirming TTAB’s holding that contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion, noting that the presence of the "strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE"); In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ("Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical."); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES (with "TECHNOLOGIES" disclaimed) did not incorporate every feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial impression was created); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6-7 (TTAB 2019) (holding registrant’s mark ROAD WARRIOR confusingly similar to petitioner’s mark WARRIOR in that registrant’s mark incorporated the entirety of petitioner’s mark and the term ROAD was weak); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018) ("[W]here . . . we are comparing a mark in standard characters to a mark that includes a pictorial representation of that term, the fact that the word + design mark includes such a pictorial representation will be taken into account to determine likelihood of confusion in terms of the marks’ overall connotation and commercial impression."); In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant's mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the "addition of a column design to the cited mark . . . is not sufficient to convey that [the] marks . . . identify different sources for legally identical insurance services"); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s "product mark," VANTAGE, to the registered mark would not avoid confusion); In re SL&E Training Stable, Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) (holding SAM EDELMAN and EDELMAN, both for wallets and various types of bags, likely to cause confusion, noting that there are strong similarities between the marks because they share the same surname, and that consumers viewing the mark EDELMAN may perceive it as an abbreviated form of SAM EDELMAN because it is the practice in the fashion industry to refer to surnames alone); In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (holding CORAZON BY CHICA with design, and CORAZON with design, both for jewelry, likely to cause confusion, noting that, "to many consumers, applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’ will simply be viewed as the identification of the previously anonymous source of the goods sold under the mark CORAZON"); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (holding MACHO COMBOS (with "COMBOS" disclaimed), and MACHO (stylized), both for food items as a part of restaurant services, likely to cause confusion); In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store services and computer maintenance and repair services in connection therwith, and CSC for various computer-related services, likely to cause confusion, noting that "the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark is not likely to help customers . . . distinguish the source of each party’s service"); In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (with "CARD" disclaimed), both for banking services, likely to cause confusion, noting that "the addition of descriptive matter to one of two otherwise similar, nondescriptive marks will not serve to avoid a likelihood of confusion"); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant's mark, SPARKS BY SASSAFRAS (stylized), for clothing, and registrant's mark, SPARKS (stylized), for footwear, likely to cause confusion, noting that "[t]hose already familiar with registrant’s use of its mark in connection with its goods, upon encountering applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some sort of house mark that may be used with only some of the ‘SPARKS’ goods"); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion, noting that the relevant consumers would view the "CELLS" portion of CONFIRMCELLS as merely descriptive); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding CAREER IMAGE (stylized) for clothing and retail women's clothing store services, and CREST CAREER IMAGES (stylized) for uniforms, likely to cause confusion, noting that CAREER IMAGE would be perceived by consumers as a shortened form of CREST CAREER IMAGES); In re Energy Images, Inc., 227 USPQ 572, 573 (TTAB 1985) (holding SMART-SCAN (stylized) for optical line recognition and digitizing processors, and SMART for telemetry systems and remote-data gathering and control systems, likely to cause confusion, noting that, because of the descriptive significance of the term "SCAN," it would be the portion of applicant’s mark that consumers would least likely rely upon to distinguish applicant’s goods); In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (holding PERRY’S PIZZA and PERRY’S, both for restaurant services, likely to cause confusion, noting that "where a newcomer has appropriated the entire mark of a registrant, and has added to it a non-distinctive term, the marks are generally considered to be confusingly similar"); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (holding RICHARD PETTY’S ACCU TUNE and design for automotive service stations, and ACCU-TUNE for automotive testing equipment, likely to cause confusion); In re Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (holding COLLEGIAN OF CALIFORNIA and design (with "CALIFORNIA" disclaimed), and COLLEGIENNE, both for items of clothing, likely to cause confusion, noting that the addition of "OF CALIFORNIA" would not obviate confusion because consumers might believe that such wording denotes a new product line from the same source); In re Pierre Fabre S.A., 188 USPQ 691, 692 (TTAB 1975) (holding PEDI-RELAX for foot cream with antiperspirant properties, and RELAX for antiperspirant, likely to cause confusion).

Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, would not likely cause confusion, based, in part, on findings that the phrase "City Bank" was frequently used in the banking industry and that "CAPITAL" was the dominant element of applicant’s marks, which gave the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) was likely to cause confusion, because, inter alia, THE RITZ KIDS created a different commercial impression); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" was descriptive as applied to the relevant goods and thus had no source-indicating significance); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and stylization in the respective marks); In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with "CATFISH" disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word "BOBBER" has different connotation when used in connection with the respective goods and services); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN RIVER" is sufficient to avoid a likelihood of confusion); see also TMEP §1207.01(b)(viii).

1207.01(b)(iv)    Similarity in Sound – Phonetic Equivalents

Similarity in sound is one factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re White Swan, Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) . For purposes of the §2(d) analysis, there is no "correct" pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark; therefore, "correct" pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (upholding the Board’s affirmance of a Section 2(d) refusal to register XCEED for agricultural seed based on a likelihood of confusion with the registered mark X-SEED and design, SEED disclaimed, for identical goods); Centraz Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that "there is no correct pronunciation of a trademark" and finding ISHINE (stylized) and ICE SHINE, both for floor finishing preparations, confusingly similar); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.3 (TTAB 1987) ("[C]orrect pronunciation as desired by the applicant cannot be relied upon to avoid a likelihood of confusion."); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (holding SEYCOS and design for watches, and SEIKO for watches and clocks, likely to cause confusion); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (holding CAYNA (stylized) for soft drinks, and CANA for, inter alia, canned and frozen fruit and vegetable juices, likely to cause confusion); In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350 (TTAB 1983) (holding ENTELEC and design for association services relating to telecommunications and other electrical control systems for use in the energy related industries, and INTELECT for promoting, planning, and conducting expositions and exhibitions for the electrical industry, likely to cause confusion); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (holding CRESCO and design for leather jackets, and KRESSCO for hosiery, likely to cause confusion).

1207.01(b)(v)    Similarity in Meaning

Similarity in meaning or connotation is another factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009) . The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); see also San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2-3 (CCPA 1977) ("Obviously, the marks here are constructed of old linguistic elements, but they must be considered as wholes, and not on the basis of side-by-side comparison, and in the light of the fallibility of memory."); Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers "may have but dim recollections from having previously seen or heard one or the other of the involved marks.").

The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant’s bras, whereas "CROSSOVER," as applied to registrant’s goods, was "likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which "crosses over" the line between informal and more formal wear . . . or the line between two seasons"); In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (holding PLAYERS for men’s underwear and PLAYERS for shoes not likely to cause confusion, agreeing with applicant's argument that the term "PLAYERS" implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but "'implies something else, primarily indoors in nature'" when applied to men’s underwear); In re Sydel Lingerie Co., 197 USPQ 629, 630 (TTAB 1977) (holding BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for men’s clothing not likely to cause confusion, noting that the wording connotes the drinking phrase "Drink Up" when applied to men’s clothing, but does not have this connotation when applied to ladies’ and children’s underwear). Cf. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017) (affirming Board decision holding standard-character mark I AM likely to cause confusion with registered I AM marks and rejecting applicant’s argument that restriction limiting the goods to those "associated with William Adams, professionally known as ‘will.i.am,’" changed the meaning or overall commercial impression of the mark).

1207.01(b)(vi)    Doctrine of Foreign Equivalents

Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. See, e.g., In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (holding BUENOS DIAS for soap, and GOOD MORNING and design for latherless shaving cream, likely to cause confusion); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983) (holding EL SOL for clothing and footwear, and SUN and design for footwear, likely to cause confusion).

Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet, and LexisNexis® evidence. If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, because, inter alia, "LUPO" is clearly the foreign equivalent of the English word "wolf").

If an examining attorney determines that the doctrine is applicable, the examining attorney must also consider all other relevant du Pont factors in assessing whether there is a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re L’Oreal S.A., 222 USPQ 925, 926 (TTAB 1984) (noting that "similarity [of the marks] in connotation must be viewed as but a single factor in the overall evaluation of likelihood of confusion").

1207.01(b)(vi)(A)    Background

With respect to likelihood of confusion, "[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source." Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973) .

Although words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when the "ordinary American purchaser" would "stop and translate" the foreign wording in a mark into its English equivalent. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (reversing holding of likelihood of confusion where the marks were VEUVE ROYALE (the French equivalent of "Royal Widow") and THE WIDOW, deeming it improbable that American purchasers would stop and translate "VEUVE" into "widow"); see In re Aquamar, Inc., 115 USPQ2d 1122, 1127 (TTAB 2015) (applying foreign equivalents doctrine after finding that Spanish is a common language in the U.S. and that ordinary purchasers would stop and translate mark MARAZUL into English). The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).

With respect to the likelihood of confusion determination, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g. In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) ; In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983) . This is the most common scenario in the case law.

The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., 221 USPQ 180, 181-83 (TTAB 1983) (noting that "[i]t seems to us that the fact that both marks may be comprised of foreign words should not mean that we can disregard their meanings" and translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite their substantially similar meanings, because of, inter alia, the highly laudatory nature of the registered mark, BIEN JOLIE). In the Lar Mor case, the marks in question consisted of common French terms and, thus, it was perhaps more likely that the ordinary American purchaser would stop and translate such terms. Cf. Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d at 1692, 1696 (noting that the doctrine of foreign equivalents will not be applied when it is unlikely that an American buyer will translate a foreign mark and agreeing with TTAB’s determination that purchasers were unlikely to translate applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but concluding that confusion was likely because, inter alia, the presence of the arbitrary term "VEUVE" as the first word in both parties’ marks renders the marks similar); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (determining that the relevant circumstances of the case did not warrant application of the doctrine where the parties’ respective marks were the Spanish terms PALOMITA and PALOMA, but concluding that confusion was likely because, inter alia, the marks were substantially similar in appearance, pronunciation, meaning, and commercial impression).

The Board has also applied the doctrine in an inter partes case where the wording in one of the marks was in a foreign language and the wording in the other mark or marks was in a different foreign language. See Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (applying the doctrine and concluding that confusion was likely where the applicant’s mark featured the Italian wording DUE TORRI, meaning "two towers," and the opposer’s marks featured the Spanish wording TORRES and TRES TORRES, meaning "towers" and "three towers" respectively), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision). However, the Board has stated that, in general, it does not apply the doctrine where both marks are non-English words from two different foreign languages. Brown Shoe Co., 90 USPQ2d at 1756; see also Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd., 5 USPQ2d 1980, 1982 (TTAB 1987) ("[T]his Board does not think it proper to take the French expression ‘bel air’ and the Italian expression ‘bel aria’ and then convert both into English and compare the English translations to determine whether there is similarity as to connotation . . . ."). One reason for not applying the doctrine where the marks are in different foreign languages is that it is less likely that the ordinary American purchaser would be fluent in two or more foreign languages. In Miguel Torres, the Board noted that the relevant marks were of such a nature that it was unnecessary for those encountering the relevant marks to be fluent in both Spanish and Italian to understand the connotations of the marks, because, for instance, a purchaser who is fluent in Spanish and familiar with meaning of the mark TORRES may be able to discern the meaning of a mark containing the Italian wording DUE TORRI and a design of two towers. 49 USPQ2d at 2021. In any case, the doctrine may not be as relevant, and certainly not the sole determinative factor, in a situation such as the Miguel Torres case where the marks are also similar in other respects.

The Board has yet to apply the doctrine in a published decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-language words or terms. In such a case, the issue would likely remain whether the ordinary American purchaser would stop and translate these combined-language marks. The sufficiency of the translation evidence, the nature of the combined foreign and English wording (i.e., whether the wording is arbitrary, suggestive, generic, etc.), and any other relevant facts and evidence should be considered in these cases.

1207.01(b)(vi)(B)    When an Ordinary American Purchaser Would "Stop and Translate"

Issues regarding the doctrine of foreign equivalents arise early in examination, that is, at the time of conducting a search for confusingly similar marks. The search of foreign words in an applied-for mark must include a search of their English translation to ensure that all possible conflicting registrations and prior-filed applications have been identified in the event that the doctrine applies. See TMEP §§809.01-809.03 for information regarding how to ascertain the meaning of non-English wording in a mark and when a translation is required.

After conducting a complete search, an examining attorney must then assess whether a refusal under §2(d) may be warranted. If so, the examining attorney should research the English translation further using available resources, such as dictionaries, the Internet, and LexisNexis®, to ascertain whether there is sufficient evidence to support applying the doctrine.

As discussed below, if the evidence shows that the English translation is "literal and direct," with no contradictory evidence of other relevant meanings or shades of meaning, then the doctrine should be applied, barring unusual circumstances. Further, if in its response to the application of the doctrine applicant argues that the foreign language is rare, obscure, or dead, then the examining attorney will need to provide evidence that the foreign language is a common, modern language.

English Translations – Literal and Direct

The Federal Circuit has stated that "[t]he test to be applied to a foreign word vis-a-vis an English word with respect to equivalency is not less stringent than that applicable to two English words." In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983).

Thus, the English translation evidence is a critical factor for the Board and the courts when determining whether to apply the doctrine. If the translation evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, the doctrine has generally been applied, and, therefore, should be applied by the examining attorney. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126-28 (TTAB 2015) (holding MARAZUL for fish and seafood, and BLUE SEA for fish, likely to cause confusion, after finding that the record evidence established that "mar azul" means "blue sea"); In re La Peregrina Ltd., 86 USPQ2d 1645, 1648-50 (TTAB 2008) (holding LA PEREGRINA for jewelry, pearls, pearl jewelry, and precious stones, and PILGRIM for jewelry, likely to cause confusion, where dictionary evidence showed that "pilgrim" is an exact translation of "peregrina" and there was no other dictionary evidence to the contrary); In re Thomas, 79 USPQ2d 1021, 1024-25 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion, where the evidence showed "MARCHE NOIR" is the exact French equivalent of the English idiom "Black Market"); In re Ithaca Indus., Inc., 230 USPQ 702, 704 (TTAB 1986) (holding LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, where there was no dispute that "LUPO" is the Italian equivalent of "wolf"); In re Hub Distrib., Inc., 218 USPQ 284, 284-85 (TTAB 1983) (holding EL SOL for clothing, and SUN and design for footwear, likely to cause confusion, where "EL SOL" was determined to be the "direct foreign language equivalent" of the term "sun"); see also Ex parte Odol-Werke Wien GmbH., 111 USPQ 286, 286 (Comm’r Pats. 1956) (finding the French language mark CHAT NOIR and its English language equivalent BLACK CAT confusingly similar because "’CHAT NOIR’ undoubtedly means, and is the same as, ‘Black Cat’ to a substantial segment" of the relevant purchasers).

When determining the appropriate English translation of the foreign wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark, such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. See, e.g., In re Perez, 21 USPQ2d 1075, 1076-77 (TTAB 1991) (holding EL GALLO for fresh vegetables, and ROOSTER for fresh citrus fruit, likely to cause confusion, rejecting applicant’s argument that purchasers would ascribe other meanings to "gallo," where "rooster" was the first English translation listed in a Spanish-English language dictionary entry for "gallo," where "gallo" was the only listed Spanish translation in a dictionary entry for "rooster," and where the design of a rooster on the specimen reinforced the translation of "GALLO").

Where the evidence shows that the English translation is not exact, literal, or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar. See Sarkli, 721 F.2d at 354-55, 220 USPQ at 112-13 (holding REPECHAGE for various skin-care products, and SECOND CHANCE for face creams and other toiletries, not likely to cause confusion, where the evidence failed to show that the terms were direct foreign equivalents); see also In re Buckner Enters., 6 USPQ2d 1316, 1316-17 (TTAB 1987) (holding DOVE (with design) for stoves and furnaces, and PALOMA for various forms of gas heating apparatus, not likely to cause confusion, because, inter alia, the Spanish word "paloma" and the English word "dove" were not exact synonyms in that "paloma" could be translated to either "dove" or "pigeon"). Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied.

Common, Modern Foreign Languages

The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Thus, an examining attorney should provide evidence to show that the foreign language is a common, modern language. The type of evidence will vary depending on the particular facts of the case but, if available, the examining attorney should provide evidence of the percentage or number of United States consumers who speak the language in question. For example:

• Census evidence showing that, after English, Spanish is the most commonly spoken language in the United States, and that over 12% of the United States population speaks Spanish, supports established case law showing the Board has routinely applied the doctrine of foreign equivalents to Spanish-language marks. Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *7 (TTAB 2019); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127 (TTAB 2015); In re La Peregrina Ltd., 86 USPQ2d 1645, 1648 (TTAB 2008).
• Census evidence provided by applicant, showing that only 0.6% of the American population speak French "very well" or "well," was used by the Board against the applicant to find that French is a commonly spoken language and that, of the foreign languages with the greatest number of speakers in the United States, French was second only to Spanish. Thomas, 79 USPQ2d at 1024.
• Evidence showing that 706,000 Russian-speakers live in the United States was persuasive evidence to establish that a "significant portion of consumers" would understand the English meaning of the Russian mark for Russian vodka. In re Joint Stock Co. "Baik," 80 USPQ2d 1305, 1310 (TTAB 2006).

Census evidence identifying the number of people who speak various foreign languages in the United States can be found at https://data.census.gov/table?q=B16001&tid=ACSDT5Y2020.B16001.

If such evidence is unavailable or unpersuasive, the examining attorney may instead provide other evidence that the language in question is a common, modern language by establishing, for example, that the foreign country where the language is spoken is a prominent trading partner of the United States or that the foreign language is spoken by a sizeable world population. Such evidence may be obtained from the USPTO’s Translations Branch, as well as the Internet, LexisNexis®, and any other relevant electronic or print resources.

If evidence shows that the language at issue is highly obscure or a dead language, the doctrine will generally not be applied. See Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d at 1696; cf. In re Spirits Int’l, N.V., 563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (indicating that the doctrine of foreign equivalents did not require that terms from dead or obscure languages be literally translated for the purpose of determining descriptiveness). The determination of whether a language is "dead" is made on a case-by-case basis, based upon the meaning the word or term would have to the relevant purchasing public. For example, Latin is generally considered a dead language. However, if evidence shows that a Latin term is still in use by the relevant purchasing public (i.e., if the term appears in current dictionaries or news articles), then this Latin term would not be considered dead. The same analysis is applied to other words or terms from uncommon or obscure languages.

Other Considerations: Alternate Meaning of Mark and Marketplace Circumstances of the Commercial Setting in Which the Mark is Used

The Board may also review the evidence of record to determine the following:

• (1) Whether the foreign wording has a meaning in the relevant marketplace that differs from the translated meaning in English; and/or
• (2) Whether it is more or less likely that the foreign expression will be translated by purchasers because of the manner in which the term is encountered in the marketing environment as used in connection with the goods and/or services.

See Thomas, 79 USPQ2d at 1025-26; see also In re Jos. Schlitz Brewing Co., 223 USPQ 45, 45-46 (TTAB 1983) (considering whether purchasers would be likely to translate the mark "KUHLBRAU" into its merely descriptive English equivalent, "cool brew"). In making such determinations, the Board generally reviews evidence such as dictionary definitions, declarations, and specimens.

Typically, the doctrine will not be applied where the foreign wording has developed an alternate meaning in the relevant marketplace that is different from the translated meaning in English, and the evidence shows that the alternate meaning would be understood by the relevant purchasing public. See La Peregrina, 86 USPQ2d at 1649 (finding that if sufficient evidence had been provided to show that the Spanish-language mark LA PEREGRINA, which translates to mean "the pilgrim," for goods including pearls and pearl jewelry, was viewed by the relevant purchasing public as the "name of a very famous and unique pearl," such would be a situation "where purchasers would not translate the name"); cf. Cont’l Nut Co. v. Le Cordon Bleu S.a.r.l., 494 F.2d 1395, 1396-97, 181 USPQ 646, 647 (C.C.P.A. 1974) (finding that applicant’s ownership of a prior registration for "BLUE RIBBON" did not preclude opposer from asserting damage resulting from applicant’s registration of the mark CORDON BLEU, (which literally translated to "blue ribbon") because CORDON BLEU would not be translated by, or have the same significance to, an American purchaser in view of the adoption by the English language of the wording CORDON BLEU, as evidenced by American English dictionary entries indicating that such wording refers to a highly skilled cook).

The doctrine also typically will not be applied where the record indicates that it is unlikely purchasers would translate the mark because of "marketplace circumstances or the commercial setting in which the mark is used." La Peregrina, 86 USPQ2d at 1648; see also Thomas, 79 USPQ2d at 1026 (finding "MARCHE NOIR" confusingly similar to "BLACK MARKET MINERALS," but suggesting that a different conclusion might have been reached if the marketplace circumstances or commercial setting in which the mark was used were such that it would be unlikely for purchasers to translate "MARCHE NOIR"); In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975) (holding TIA MARIA (which translates to "Aunt Mary") for restaurant services, and AUNT MARY’S for canned fruits and vegetables, not likely to cause confusion, because, inter alia, a person dining at the TIA MARIA restaurant surrounded by its Mexican décor and Mexican food, would be likely to accept "TIA MARIA" as it was and not translate it into "AUNT MARY").

Additionally, the doctrine typically will not be applied to personal names that would be recognizable as first names to ordinary American consumers and thus perceived as identifying a person. Ricardo Media, 2019 USPQ2d 311355, at *7-9 (record did not support a finding that "consumers would be likely to translate RICARDO to RICHARD, or RICHARD to RICARDO, but would instead take each name as it is, in its own language, as identifying the person named, whether real or fictional, known or anonymous." Id. at *8; In re Tia Maria, Inc., 188 USPQ at 525-26.

1207.01(b)(vi)(C)    Likelihood of Confusion Factors Still Apply When Assessing Whether Marks are Confusingly Similar

If the examining attorney has sufficient evidence to show that foreign wording comprising a mark has a relevant, literal, and direct English translation such that the foreign wording has an English language equivalent, then the doctrine generally should be applied. However, applying the doctrine is only part of the process of determining whether the marks being compared are confusingly similar. Appearance, sound, meaning, and overall commercial impression are also factors to be considered when comparing marks. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re Ness & Co., 18 USPQ2d 1815, 1816 (TTAB 1991) ("’[S]uch similarity as there is in connotation [between the foreign word mark and the English word mark] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.’" (quoting In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983))).

Similarity of the marks in one respect – sight, sound, or meaning – does not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related; rather, the rule is that, taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) ; TMEP §1207.01(b)(i).

For example, if the English and foreign marks being compared are weak or highly suggestive, or have additional wording or matter that serves to distinguish the marks, then regardless of application of the doctrine and similarity in meaning, the marks may not be considered confusingly similar. See Ness & Co., 18 USPQ2d at 1816 (holding GOOD-NESS for cheese and meats, and LABONTE (which translates to "the goodness") for cheese, not likely cause confusion, because of the laudatory nature of the term "goodness," the dissimilarity of the marks in appearance and sound, the slight differences in meaning of the marks, and the connotation of the mark GOOD-NESS in relation to applicant’s company name "Ness & Co."); In re L’Oreal S.A., 222 USPQ 925, 925-26 (TTAB 1984) (considering the English translation of the French mark HAUTE MODE (meaning "high fashion" in English), but concluding that contemporaneous use with the HI-FASHION SAMPLER was not likely to cause confusion, because of, inter alia, the "less than wholly arbitrary nature of the marks" and the differences in the marks, including the addition of the term SAMPLER in the English-language mark).

If both marks being compared are in a foreign language and have the same or a very similar meaning when translated, the following factors should also be assessed: (1) whether the English meaning of the marks is weak or highly suggestive with respect to the goods and/or services; and (2) whether the marks being compared are similar in sound and/or appearance in addition to having the same or similar meaning. If the marks are not weak or highly suggestive and are similar in meaning and sound, they may be found to be confusingly similar. See Miguel Torres S.A v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (applying the doctrine and concluding that confusion was likely where the applicant’s mark featured the Italian wording DUE TORRI, meaning "two towers," and opposer's marks featured the Spanish wording TORRES and TRES TORRES, meaning "towers" and "three towers" respectively, because the marks were similar not only in connotation but also in sound), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision); In re Lar Mor Int'l, Inc., 221 USPQ 180 (translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite the marks’ substantially similar meanings, because of, inter alia, the highly laudatory nature of the wording "JOLIE," and the "obvious visual and phonetic differences" between the marks).

In addition, when comparing only foreign language marks, even if it is determined that the marks are not likely to be translated by purchasers, the marks may still be found confusingly similar for other reasons, such as similarity in sound and/or appearance. See Palm Bay Imps., 396 F.3d at 1372-73, 1377, 73 USPQ2d at 1691, 1696 (agreeing with Board’s finding that purchasers would not translate into English applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, and upholding the Board’s determination that confusion was nonetheless likely as to these marks, because, inter alia, "the presence of [the] strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory . . . significance of the word ROYALE").

See also TMEP §§1209.03(g), 1210.05(b), 1210.10, and 1211.01(a)(vii) for additional information regarding the doctrine of foreign equivalents.

1207.01(b)(vii)    Transposition of Terms

Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression, there may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER (with "RUST" disclaimed) for rust-penetrating spray lubricant, and BUST RUST for penetrating oil, likely to cause confusion); In re Gen. Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (holding SPRINT STEEL RADIAL (with "STEEL" and "RADIAL" disclaimed) for pneumatic tires, and RADIAL SPRINT (with "RADIAL" disclaimed) for radial tires, likely to cause confusion).

However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely. See, e.g., In re Best Prods. Co., 231 USPQ 988, 989-90 (TTAB 1986) (holding BEST JEWELRY and design (with "JEWELRY" disclaimed) for retail jewelry store services, and JEWELERS’ BEST for bracelets, not likely to cause confusion).

1207.01(b)(viii)    Marks Consisting of Multiple Words

When assessing the likelihood of confusion between compound word marks, although each mark must be considered as a whole, it is appropriate to consider whether a portion of the mark is dominant in creating the mark’s commercial impression. As the Court of Appeals for the Federal Circuit has when articulating reasons for reaching a conclusion on the issue of confusion, "there is nothing improper in stating that. . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties." Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985)); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *4 (TTAB 2020); see also In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018).

Although there is no mechanical test to select a "dominant" element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding that "DELTA," not the disclaimed generic term "CAFE," is the dominant portion of the mark THE DELTA CAFE); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (finding that "BINION’S," not the disclaimed descriptive wording "ROADHOUSE," is the dominant portion of the mark BINION’S ROADHOUSE). Accordingly, if two marks for related goods or services share identical or similar dominant features and the marks, when viewed in their entireties, create similar overall commercial impressions, then confusion is likely. See, e.g., In re Cynosure, Inc., 90 USPQ2d 1644, 1646 (TTAB 2009) (holding CYNERGY for medical lasers for, inter alia, treatment of the face and skin, and SYNERGIE PEEL for medical devices for microdermabrasion, likely to cause confusion, noting that "SYNERGIE" is the dominant portion of the cited mark and "PEEL" is insufficient to distinguish the marks); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (holding JM ORIGINALS (with "ORIGINALS" disclaimed) for various items of apparel, and JM COLLECTABLES for sport shirts, likely to cause confusion).

If the common element of two marks is "weak" in that it is generic, descriptive, or highly suggestive of the named goods or services, it is unlikely that consumers will be confused unless the overall combinations have other commonality. See, e.g., Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-40, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015) (remanded for consideration of whether and to what degree the phrase PEACE & LOVE was suggestive or descriptive in the food-service industry); In re Bed & Breakfast Registry, 791 F.2d 157, 159, 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that contemporaneous use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is likely to cause confusion, because, inter alia, the descriptive nature of the shared wording weighed against a finding that the marks are confusingly similar); In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018) (holding I’M SMOKING HOT for cosmetics and related non-medical personal care items and SMOKIN’ HOT SHOW TIME for cosmetics not likely to cause confusion based on a totality of the evidence showing that the shared wording is somewhat weak in view of its suggestiveness and that the marks overall convey different commercial impressions); U.S. Shoe Corp. v. Chapman, 229 USPQ 74, 75 (TTAB 1985) (holding COBBLER’S OUTLET for shoes, and CALIFORNIA COBBLERS (in typed and stylized forms) for footwear and women’s shoes, not likely to cause confusion); In re Istituto Sieroterapico E Vaccinogeno, Toscano "SCLAVO" S.p.A., 226 USPQ 1035, 1037 (TTAB 1985) (holding ASO QUANTUM (stylized, with "ASO" disclaimed) for diagnostic laboratory reagents, and QUANTUM I for laboratory instruments for analyzing body fluids, not likely to cause confusion); see also TMEP §§1207.01(b)(iii), (b)(ix).

However, while the public may rely more on the nondescriptive portions of marks to distinguish them, "this does not mean that the public looks only at the differences [between the marks], or that descriptive words play no role in creating confusion." In re Nat’l Data Corp., F.2d at 1060, 224 USPQ at 752; see also In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (affirming the Board’s holding that the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are similar, noting that "the Board proffered rational reasons why th[e] words [‘Co.’ and ‘Club’], as mere business identifiers, do not sufficiently distinguish the marks").

1207.01(b)(ix)    Weak or Descriptive Marks

The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)); Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, 2022 USPQ2d 1035, at *40-41, *51-52 (TTAB 2022); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009) ; In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984) . However, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (C.C.P.A. 1974) ; In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (quoting In re Chica, Inc., 84 USPQ2d 1845, 1850 (TTAB 2007)).

With respect to marks registered on the Supplemental Register, the Board stated the following in In re Hunke and Jochheim:

[R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as "weak" marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods.

185 USPQ 188, 189 (TTAB 1975) (citation omitted).

However, even marks that are registered on the Supplemental Register may be cited under §2(d)of the Trademark Act. In re Clorox Co., 578 F.2d 305, 308-09, 198 USPQ 337, 341 (C.C.P.A. 1978); In re Medline Indus., Inc., 2020 USPQ2d 10237, at *3 (TTAB 2020) (quoting Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012)).

1207.01(b)(x)    Parody Marks

The fact that a mark is intended to be a parody of another trademark is not, by itself, sufficient to overcome a likelihood of confusion refusal, because "[t]here are confusing parodies and non-confusing parodies." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §31.153 (4th ed. 2010); see also Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) ("[P]arody is not a defense if the marks would otherwise be considered confusingly similar."). "A true parody actually decreases the likelihood of confusion because the effect of the parody is to create a distinction in the viewer’s mind between the actual product and the joke." Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 910, 231 USPQ 963, 965 (D. Neb. 1986), aff’d, 836 F.2d 397, 5 USPQ2d 1314 (8th Cir. 1987). Thus, "[w]hile a parody must call to mind the actual product to be successful, the same success also necessarily distinguishes the parody from the actual product." Id.

Cases involving a discussion of parody include the following: Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that "likelihood of confusion will usually trump any First Amendment concerns"); Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that "parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks"); Columbia Pictures Indus. Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-shirts, likely to cause confusion, noting that the "right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another"); see also Jordache Enters. v. Hogg Wyld Ltd., 828 F.2d 1482, 4 USPQ2d 1216, 1220, 1222 (10th Cir. 1987) (noting that "a parody of an existing trademark can cause a likelihood of confusion," but affirming district court’s holding that contemporaneous use of LARDASHE and JORDACHE, both for jeans, is not likely to cause confusion).

1207.01(b)(xi)    Color Marks

When the marks at issue are both color marks, "the similarity of the marks must be decided primarily on the basis of visual similarity." In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1381 (TTAB 2012) (citing Gen. Foods Corp. v. Ito Yokado Co., 219 USPQ 822, 828 (TTAB 1983)). However, "'the test is not whether the marks can be distinguished when subjected to a side-by-side comparison,' but 'rather whether the marks are sufficiently similar in terms of their appearance and overall commercial impression so that confusion as to the source of the goods [or services] offered under the respective marks is likely to result.'" In re Medline Indus., Inc., 2020 USPQ2d 10237, at *7-8 (TTAB 2020) (quoting In re Cook Med. Tech. LLC, 105 USPQ2d at 1381.

In In re Cook Medical Technologies, the Board affirmed a refusal to register the color "teal" for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures," holding the mark likely to cause confusion with a registered mark for the color "blue" applied to the tip and indwelling length of catheters. 105 USPQ2d at 1385. Because the registrant’s "blue" mark was not limited to a particular shade of blue, it covered all shades of blue, including the applicant’s "teal." Id., 105 USPQ2d at 1382. Further, the Board found that, in the context of the goods at issue, the marks were similar in color, noting that the original description of the applicant’s mark identified it as the color "blue/teal," and that the goods were complementary. Id., at 1380, 1382-83. However, in In re Medline Industries, the Board reversed a Section 2(d) refusal to register a pale shade of green (Pantone 2274C) for "medical examination gloves" with a registration for a bright shade of green (Pantone 7488U) for "gloves for medical use," because the mark descriptions identified specific shades of green instead of all shades of green and significant third-party evidence corroborated the weakness of the registered mark, such that the difference in shades was "significant enough to make confusion unlikely even though the involved shades of green [were] used on identical goods sold through identical channels of trade to identical customers"). 2020 USPQ2d 10237, at *1, *5-6, *13.

1207.01(c)    Design Marks

When the marks at issue are both design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. E.g., In re ATV Network Ltd., 552 F.2d 925, 927 (C.C.P.A. 1977); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990). In this situation, consideration must be given to the fact that the marks usually will not be viewed side-by-side in the marketplace and a purchaser’s recollection of design marks is often of a general, rather than specific, nature; thus the marks may be confusingly similar despite differences between them. See, e.g., Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587 (C.C.P.A. 1973) ("Legal surgery, in which trademarks have parts enhanced or discarded, is of little aid in determining the effect of design marks on purchasers who merely recollect"); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding mark consisting of a design featuring silhouettes of a man and woman, used in connection with distributorship services in the field of health and beauty aids, and mark consisting of a design featuring silhouettes of a man and woman, used in connection with skin cream, likely to cause confusion); In re Steury Corp., 189 USPQ 353 (TTAB 1975) (holding mark consisting of three generally horizontal bars, for, inter alia, boats, campers, and travel trailers, and mark consisting of two generally horizontal bars, for, inter alia, boats, campers, and travel trailers, likely to cause confusion); Matsushita Elec. Indus. Co. v. Sanders Assocs., Inc., 177 USPQ 720 (TTAB 1973) (holding mark consisting of a triangular arrow design within a square border, for various items of electrical and electronic equipment, and mark consisting of a triangular arrow design, for various items of electrical and electronic equipment, likely to cause confusion); cf. Red Carpet Corp. v. Johnstown Am. Enters., 7 USPQ2d 1404 (TTAB 1988) (holding mark consisting of a highly stylized house design for use in connection with real estate property management, and mark consisting of a highly stylized house design for use in connection with real estate brokerage services, not likely to cause confusion); Ocean Spray Cranberries, Inc. v. Ocean Garden Prods., Inc., 223 USPQ 1027 (TTAB 1984) (holding mark consisting of a circle containing three curved lines with rounded ends, for seafood, and mark consisting of a stylized breaking wave within an oval, for various food items including juices and fruits, not likely to cause confusion).

1207.01(c)(i)    Legal Equivalents – Comparison of Words and Their Equivalent Designs

Under the doctrine of legal equivalents, which is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers, a design mark may be found to be confusingly similar to a word mark consisting of the design's literal equivalent. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (holding applicant’s mark consisting of a silhouette of a lion’s head and the letter "L," for shoes, and registrant’s mark, LION, for shoes, likely to cause confusion); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984) (holding applicant’s marks featuring a design of a mountain lion, for clothing items, and opposer’s marks, a puma design and PUMA (with and without puma design), for items of clothing and sporting goods, likely to cause confusion); In re Duofold Inc., 184 USPQ 638 (TTAB 1974) (holding mark consisting of a design of an eagle lined for the color gold, for sports apparel, and mark consisting of GOLDEN EAGLE and design of an eagle, for various items of clothing, likely to cause confusion).

Where, however, a pictorial representation in a mark is so highly stylized or abstract that it would not readily evoke in the purchaser’s mind the wording featured in another mark, the marks may not be confusingly similar. See, e.g., In re Serac, Inc., 218 USPQ 340, 341 (TTAB 1983) (concluding that applicant’s design mark was "so highly stylized that an image of a ram’s head would not be immediately discerned and the connection with [the registered mark] ‘RAM’s HEAD’ would not be readily evoked with the resulting generation of a likelihood of source confusion").

1207.01(c)(ii)    Composite Marks Consisting of Both Words and Designs

Often, the examining attorney must determine whether a likelihood of confusion exists between composite marks that consist of a design element combined with words and/or letters. Frequently, the marks at issue are similar in only one element. Although it is not proper to dissect a mark, if one feature of a mark is more significant than another feature, greater weight may be given to the dominant feature for purposes of determining likelihood of confusion. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018); In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000); In re Nat’l Data Corp., 753 F. 2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); see also TMEP §1207.01(b)(iii). However, the fundamental rule in this situation is that the marks must still be considered in their entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1371, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).

If a mark comprises both wording and a design, greater weight is often given to the wording, because it is the wording that purchasers would use to refer to or request the goods or services. See, e.g., Viterra, 671 F.3d at 1366, 101 USPQ2d at 1911; Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *41-42 (TTAB 2022) (quoting Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at *31 (TTAB 2021)); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010) ; In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) ; see also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 395 (Fed. Cir. 1983). The Court of Appeals for the Federal Circuit has cautioned, however, that "[t]here is no general rule as to whether letters or designs will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue." In re Electrolyte Labs. Inc., 913 F.2d 930, 932, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).

The comparison of composite marks must be done on a case-by-case basis, without reliance on mechanical rules of construction. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA, 797 F.3d at 1371-72, 116 USPQ2d at 1134-35 (finding the Board lacked substantial evidence for minimizing the literal element in the composite mark); Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 1295, 184 USPQ 35, 37 (C.C.P.A. 1974) (reversing the Board’s holding that confusion was not likely between SPICE TREE with tree design, for garlic powder and minced onion, and SPICE ISLANDS with and without tree design, for seasoning herbs and spices); Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at *1-3, *31 (holding confusion likely between ROYAL MIRAGE with crown and carrier design for cosmetics, including perfume and cologne, and MIRAGE BRANDS and M MIRAGE BRANDS with design (both with BRANDS disclaimed) for perfumes and colognes); In re Info. Builders Inc., 2020 USPQ2d 10444, at *7 (TTAB 2020) (holding confusion likely between INFORMATION BUILDERS where the first "o" in "information" appeared as a plain circle broken in the upper right and lower left with three parallel bars within the "o", and a similar "o" design with no wording, both used for related software and IT services); In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) (holding confusion not likely between REDNECK RACEGIRL and design of large, double-letter RR configuration and registered mark RACEGIRL, even when used on in-part identical goods); In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009) (holding confusion not likely betwee VOLTA for vodka infused with caffeine, and TERZA VOLTA and vine shoot design for wines); In re Sun Supermarkets, Inc., 228 USPQ 693, 694 (TTAB 1986) (holding confusion likely between SUN SUPERMARKETS with sun design, for retail supermarket services, and SUNSHINE and SUNRISE (both with sun designs), for retail grocery store services).

1207.01(c)(iii)    Comparison of Standard Character Marks and Special Form Marks

If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *42 (TTAB 2022); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007) . The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009) . A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely "reasonable manners" of depicting such mark. See In re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d at 1187 ("We hold that when we are comparing a standard character mark to a word + design mark for Section 2(d) purposes, we will consider variations of the depictions of the standard character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers, or any combination thereof.’"). Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) ; In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) ; In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) . Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987) ; In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986) .

See TMEP §§807.03-807.04(b) regarding standard character and special form drawings.

1207.01(c)(iv)    Matter Depicted in Broken Lines

In some cases, where the position of the mark on the goods (or on a label or container for the goods) is a feature of the mark, the applicant will submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears. 37 C.F.R. §2.52(b)(4); TMEP §807.08.

The matter depicted in broken lines is not part of the mark and should not be considered in determining likelihood of confusion. See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006) .

1207.01(d)    Miscellaneous Considerations

1207.01(d)(i)    Doubt Resolved in Favor of Registrant

If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009) ; see also In re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015) (noting that to the extent that the punctuation in registrant's identification of goods created ambiguity as to the scope of the identification, any doubt must be resolved in favor of the registrant).

1207.01(d)(ii)    Absence of Actual Confusion

It is well settled that the relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary to show actual confusion to establish likelihood of confusion. See In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018); Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 17 USPQ2d 1797, 1800 (Fed. Cir. 2018); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *58-59 (TTAB 2022); In re Big Pig, Inc., 81 USPQ2d 1436, 1439-40 (TTAB 2006) .

1207.01(d)(iii)    Third-Party Registrations and Evidence of Third-Party Use

Third-party registrations used to show relatedness. Third-party registrations that cover the goods or services of the applicant and registrant may have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. See Hewlett-Packard Co. v. Packard Press, Inc., 28h1 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis"); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *45-46 (TTAB 2022) (quoting Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1432 (TTAB 2013)); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Third-party registrations that are not based on use in commerce, such as those registered under §66(a) of the Trademark Act (15 U.S.C. §1141f(a) ),  or those registered solely under §44 of the Act (15 U.S.C. §1126(e) ), and for which no §8 or §71 affidavits or declarations of continuing use have been filed (15 U.S.C §§1058, 1141k ), have very little, if any, persuasive value. See Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *25-26; In re Info. Builders Inc., 2020 USPQ2d 10444, at *6 n.19 (TTAB 2020) (citing (citing Calypso Tech., Inc. v. Calypso Cap. Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011), appeal dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); In re Princeton Tectronics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010)); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).

Third-party registrations used to show inherent or conceptual weakness of a term or mark component. Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. E.g., In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). However, a large number of active third-party registrations including the same or similar term or mark component for the same or similar goods or services may be given some weight to show, in the same way that dictionaries are used, that a mark or a portion of a mark has a normally understood descriptive or suggestive connotation, leading to the conclusion that the term or mark component is relatively weak. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *24; Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1036 (TTAB 2016); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1471 (TTAB 2014); In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). However, cancelled or expired third-party registrations for similar marks are not probative evidence of a mark’s descriptiveness, suggestiveness, or strength. See New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *13 (TTAB 2020) (citing In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019)); In re Info. Builders Inc., 2020 USPQ2d 10444, at *6 n.19 (citing Bond v. Taylor, 119 USPQ2d 1049, 1054 n.10 (TTAB 2016), appeal dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011)).

Third-party use to show commercial weakness. Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods." In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of third-party use may bear on the commercial strength or weakness of a mark. Juice Generation, 794 F.3d at 1338-39, 115 USPQ2d at 1674. Significant evidence of third-party use of similar marks on similar goods or services can show that consumers have become conditioned by encountering so many similar marks that they distinguish between them based on minute distinctions. Id.; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). If the applicant's evidence is properly submitted and establishes ubiquitous or considerable third-party use of the same or similar marks on the same or similar goods or services, it may be "relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Palm Bay Imps., 396 F.3d at 1373-74, 73 USPQ2d at 1693; see Jack Wolfskin, 797 F.3d at 1373-74, 116 USPQ2d at 1136-37, 1136 (finding evidence of ubiquitous use of a paw print design on clothing rendered that component of the opposer’s mark relatively weak for clothing); Juice Generation, 794 F.3d at 1337 n.1, 1341-42, 115 USPQ2d at 1673 n.1, 1676-77 (finding evidence of a considerable number of third-party uses of the component "peace and love" in connection with restaurant services or food products relevant to assessing the opposer’s mark’s strength or weakness without the need for specifics as to the extent or impact of use); In re FabFitFun, Inc., 127 USPQ2d 1670, 1674-75 (TTAB 2018) (finding the component term SMOKING HOT in the marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be "somewhat weak" based in part on evidence of third-party use of the term on similar cosmetics goods, noting that such uses "tend to show consumer exposure to third-party use of the term on similar goods"); see also Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, at 1034-36 (finding weakness based on at least eighty-five actual uses of ROSE-formative marks for similar services and eight similar third-party registrations); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996) (holding no likelihood of confusion due to differences in the marks and finding "Broadway" weak for restaurant services based on evidence that hundreds of restaurants and eating establishments used Broadway as a trademark or trade name); cf. In re i.am.symbolic, llc, 866 F.3d at 1329, 123 USPQ2d at 1751 ("Symbolic’s evidence of third-party use of I AM for the same or similar goods falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark components present in its cited cases.").

Limitations regarding probative value of third-party registration or use evidence to show weakness of mark in cited registration. The potential relevance of third-party registrations and uses offered to support registrability over the cited registration depends on the relationship they bear to the application and registration at issue. The third-party marks must generally be as similar to the registered mark as the applied-for mark. See, e.g., Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 675, 223 USPQ 1281, 1284-85 (Fed. Cir. 1984) ("Applicant introduced evidence of eight third-party registrations for tea which contain the word ‘SPICE’, five of which are shown to be in use. None of these marks has a ‘SPICE (place)’ format or conveys a commercial impression similar to that projected by the SPICE ISLANDS mark, and these third-party registrations are of significantly greater difference from SPICE VALLEY and SPICE ISLANDS than either of these two marks from each other."); see also In re Mighty Leaf Tea, 601 F.3d 1342, 1347, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). Potential relevance also depends on whether the third-party registered marks and uses are for goods or services as similar to those in the cited registration as those identified in the application. See, e.g., Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) ("None of the third party marks and uses of ACE made of record are nearly as closely related to the activities of the parties as the virtually identical uses of the parties are to each other. Thus, we agree with the Board that nothing in the record shows a narrowing of Editors’ identification with A.C.E./ACE by third party marks with respect to the relevant public, namely, the film industry or even the broader entertainment industry. In sum, Cable’s argument that it can use ACE because ACE is a ‘weak’ mark, as an abstract proposition, is not only unpersuasive but essentially meaningless.") (citation omitted); see also Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1325-26, 128 USPQ2d 1686, 1694-95 (Fed. Cir. 2018) (citing Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991)).

However, considering a mark’s relative strength or weakness is only part of the process of determining whether there is a likelihood of confusion. Even registered marks deemed "weak" are entitled to the presumptions of validity under Section 7(b), and are entitled to protection under Section 2(d) against the registration of confusingly similar marks. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1304, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (affirming the Board’s conclusion that confusion was likely between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB, marks comprised of the "conceptually weak" wording DETROIT ATHLETIC combined with the non-source identifying business identifiers "Co." and "Club"); see also King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); Food Specialty Co. v. Standard Prods. Co., 406 F.2d 1397, 1398, 161 USPQ 46, 47 (C.C.P.A. 1969) (in speaking of marks as being weak or strong, "we should not lose sight of the ultimate question that must be answered, namely, whether there is a likelihood of confusion, mistake, or deception."). Thus, arguments that third-party use has rendered the registered mark so weak as to lack any source-identifying ability may not be raised in examination, but only in cancellation proceedings. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) ("it is not open to an applicant to prove abandonment of a registered mark in an ex parte registration proceeding"; a cancellation proceeding against the registrant is required) (citations omitted); Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 766, 214 USPQ 327, 336 (C.C.P.A. 1982) (where a "fail[ure] to police its mark" has "caused the [registered] mark to lose its significance as a mark," a cancellation proceeding for abandonment may lie).

See TMEP §710.01(b) regarding the proper submission of Internet evidence and §710.03 regarding making third party registrations of record.

1207.01(d)(iv)    Collateral Attack on Registration Improper in Ex Parte Proceeding

Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b),  provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. "The presumption of validity is not conditional; the statute provides that a certificate of registration 'shall' result in the presumption, without specifying any exceptions." SoClean, Inc. v. Sunset Healthcare Sols., Inc., 52 F.4th 1363, 1369, 2022 USPQ2d 1067, at *3 (Fed. Cir. 2022).

During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant’s nonuse of the mark). See In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (noting that applicant’s objection to the breadth of the goods or trade channels described in the cited registration "amounts to an attack on the registration's validity" and that "the present ex parte proceeding is not the proper forum from which to launch such an attack," which is "better suited for resolution in a cancellation proceeding"); In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007) ; In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992) ; In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988) .

It is also inappropriate for the applicant in an ex parte proceeding to place the burden of showing a likelihood of confusion on the owner of the cited registration. In re Majestic Distilling Co., 315 F.3d 1311, 1318, 65 USPQ2d 1201, 1206 (Fed. Cir. 2003) ("'It is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks. . . . [I]t is no answer for the applicant to ask that the application be passed to publication to see whether the owner of the cited mark will oppose the registration.'" (quoting Dixie Rests., 105 F.3d at 1408, 41 USPQ2d at 1535)).

1207.01(d)(v)    Classification of Goods/Services

The classification of goods and services has no bearing on the question of likelihood of confusion. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018); Jean Patou, Inc. v. Theon Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). Rather, it is the manner in which the applicant and/or registrant have identified their goods or services that is controlling. See Nat'l Football League v. Jasper All. Corp., 16 USPQ2d 1212, 1216 & n.5 (TTAB 1990) .

1207.01(d)(vi)    Prior Decisions of Examining Attorneys

Each case must be decided on its own merits. E.g., In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009) (citing In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994)). Previous decisions by examining attorneys in approving other marks are without evidentiary value and are not binding on the agency or the Trademark Trial and Appeal Board. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001).

1207.01(d)(vii)    Sophisticated Purchasers

The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune to source confusion. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) ("even sophisticated purchasers can be confused by very similar marks"); Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 1548, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweighed sophisticated purchasers, careful purchasing decision, and expensive goods); In re Info. Builders Inc., 2020 USPQ2d 10444, at *4 (TTAB 2020) (quoting In re Rsch. & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)) ("That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods [or services]. ‘Human memories even of discriminating purchasers . . . are not infallible.’"); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011) (citing In re Wilson, 57 USPQ2d 1863, 1865-66 (TTAB 2001); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988)) ("even consumers who exercise a higher degree of care are not necessarily knowledgeable regarding the trademarks at issue, and therefore immune from source confusion"); cf. Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly considered all potential investors for recited services, which included sophisticated investors, but that precedent required TTAB decision to be based "on the least sophisticated potential purchasers"). However, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) ("even in the case of the least sophisticated purchaser, a decision as important as choosing a senior living community will be made with some thought and research, even when made hastily").

1207.01(d)(viii)    Consent Agreements

The term "consent agreement" generally refers to an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.

An applicant may submit a consent agreement in an attempt to overcome a refusal of registration under Trademark Act §2(d), or in anticipation of a refusal to register. However, an examining attorney may not solicit a consent agreement.

A consent agreement may take a number of different forms and arise under a variety of circumstances, but, when present, it is "but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d)." In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016) ("[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined.").

Factors to be considered in weighing a consent agreement include the following:

• (1) Whether the consent shows an agreement between both parties;
• (2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
• (3) Whether the parties agree to restrict their fields of use;
• (4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
• (5) Whether the marks have been used for a period of time without evidence of actual confusion.

In re Dare Foods Inc., 2022 USPQ2d 291, at *11-12 (TTAB 2022) (citing In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1074 (Fed. Cir. 1993); In re Mastic Inc., 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362-63, 177 USPQ 563, 568 (C.C.P.A 1973)).

"Naked" consent agreements (i.e., agreements that contain little more than a prior registrant’s consent to registration of an applied-for mark and possibly a mere statement that source confusion is believed to be unlikely) are typically considered to be less persuasive than agreements that detail the particular reasons why the relevant parties believe no likelihood of confusion exists and specify the arrangements undertaken by the parties to avoid confusing the public. See In re Mastic Inc., 829 F.2d at 1117, 4 USPQ2d at 1295 ("If . . . the consent is ‘clothed’ with the parties’ agreement to undertake specific arrangements to avoid confusion of the public, as in DuPont, the parties’ assessment of no likelihood of confusion is entitled to greater weight, not because of the consent itself, but because such arrangements are additional factors which enter into the likelihood of confusion determination."); In re E.I. du Pont de Nemours & Co., 476 F.2d at 1362, 177 USPQ at 568 (noting that "[i]n considering agreements, a naked ‘consent’ may carry little weight," but "[t]he weight to be given more detailed agreements . . . should be substantial"); In re Dare Foods Inc., 2022 USPQ2d 291, at *19 ("The consent agreement in this appeal constitutes more than a mere naked consent and, therefore, plays a more dominant role in the likelihood of confusion analysis" even though the agreement did not discuss all the factors relevant to reviewing consent agreements); In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1162 (TTAB 2018) (finding "[t]he consent agreement . . . constitute[d] more than a mere naked consent and, therefore, ought to play a more dominant role in the likelihood of confusion analysis."); see also In re Bay State Brewing Co., 117 USPQ2d at 1967 (holding confusion likely even if the parties’ marks were used in accordance with the consent agreement of record, because the agreement did "not comprise the type of agreement that is properly designed to avoid confusion," nor did it "fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods"); In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1956 (TTAB 1994) ("[T]he more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded."); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984) (finding a consent agreement submitted by applicant did not alter the conclusion that confusion was likely, because the agreement was "naked" in that it merely indicated that each party would recognize, and refrain from interfering with, the other’s use of their respective marks and that the applicant would not advertise or promote its mark without its company name, but the agreement did not restrict the markets or potential customers for their goods in such a way as to avoid confusion); cf. In re Wacker Neuson SE, 97 USPQ2d 1408, 1415-16 (TTAB 2010) (finding an otherwise "thin consent" to be viable and reversing a §2(d) refusal, in view of the relationship of the parties, the provisions of a licensing agreement executed by the parties, and the fact that the goods and services offered under both parties’ marks were manufactured and sold by applicant). Although including a provision that the parties agree to make efforts to avoid any potential confusion (see factors (3) and (4) above) is preferred and may render a consent agreement more probative, such provisions are not mandatory. In re Am. Cruise Lines, Inc., 128 USPQ2d at 1162. And while evidence that the marks have been in use for a period of time without actual confusion may render a consent agreement more probative (see factor 5 above), it is not an essential provision for a consent agreement to have probative value. In re Dare Foods Inc., 2022 USPQ2d 291, at *18-19.

If a consent agreement makes representations about both parties’ beliefs regarding the lack of likelihood of confusion (see factors (2) through (4) above) and/or indicates that both parties have agreed to undertake certain actions to avoid confusion (see factors (3) and (4) above), then it should be signed by both parties, or by individuals with legal authority to bind the respective parties. In some instances, however, a consent document might be signed only by the registrant, because only the registrant has provided its consent, agreed to take certain actions, or made representations as to the likelihood of confusion. The absence of applicant’s signature on the document in such cases does not necessarily render the document unacceptable, but, like any other consent document, its persuasive value should be determined in light of all other evidence in the record. See, e.g., Donnay Int’l, 31 USPQ2d at 1956-57 (finding that a consent letter signed only by the registrant and consisting merely of registrant’s consent to applicant’s registration and use of the applied-for mark was entitled to limited weight, but nonetheless concluding that it served to "tip the scales" in favor of reversing the §2(d) refusal, especially in view of the minimal evidence supporting the conclusion that confusion was likely); In re Palm Beach Inc., 225 USPQ 785, 787-88 (TTAB 1985) (concluding there was no reasonable likelihood of confusion as to applicant’s and registrant’s marks, based on, inter alia, the different nature of the parties’ goods, two consent letters signed only by owners of the cited registration, and an affidavit of an officer of applicant’s subsidiary indicating that actual confusion had not occurred during the more than 45 years of the marks’ coexistence and that future likelihood of confusion was believed to be unlikely).

In the In re E. I. du Pont de Nemours & Co. decision, the Court of Customs and Patent Appeals stated as follows:

[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.

476 F.2d at 1363, 177 USPQ at 568.

Accordingly, the Court of Appeals for the Federal Circuit has indicated that consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion. See In re Four Seasons Hotels Ltd., 987 F.2d at 1569, 26 USPQ2d at 1074; In re N.A.D. Inc., 754 F.2d at 996, 224 USPQ at 969; see also du Pont, 476 F.2d at 1362-63, 177 USPQ at 568; cf. In re Mastic Inc., 829 F.2d at 1118, 4 USPQ2d at 1295-96 (affirming TTAB’s holding that applicant’s mark was barred by §2(d), because the provided consent to register was essentially a "naked" consent and all other relevant factors weighed in favor of a conclusion that confusion was likely).

Thus, examining attorneys should give substantial weight to a proper "clothed" consent agreement. When an applicant and registrant have entered into a consent agreement that shows they have clearly thought out their commercial interests, and, on balance, the other factors do not dictate a finding of likelihood of confusion, the parties' consent agreement favors a conclusion that confusion is not likely.

A consent agreement is not the same as a "concurrent use" agreement. The term "concurrent use" is a term of art that refers to a geographical restriction on the registration. See TMEP §1207.04 regarding concurrent use.

1207.01(d)(ix)    Fame of the Prior Registered Mark

According to In re E. I. du Pont de Nemours & Co., the "fame of the prior mark" is a factor to be considered in determining likelihood of confusion. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Because, in ex parte proceedings, the examining attorney is not expected to submit evidence regarding the fame of the cited mark, this factor is usually treated as neutral in such proceedings. However, this factor is usually considered more significant in inter partes proceedings. See Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061 (Fed. Cir. 2012); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Rsch. in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192-93 (TTAB 2012) ; In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) .

Famous marks are afforded a broad scope of legal protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 1363, 2022 USPQ2d 513, at *8 (Fed. Cir. 2022) (finding "the LEHMAN BROTHERS mark ha[d] achieved a high degree of fame" and thus was "afforded a broad scope of protection"); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (finding Board did not err in evaluating the fame of opposer's mark VEUVE CLICQUOT); Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371-76, 63 USPQ2d 1303, 1305-09 (Fed. Cir. 2002) (finding opposer’s marks, ACOUSTIC WAVE and WAVE, to be famous and thus entitled to broad protection); Recot, 214 F.3d at 1327, 54 USPQ2d at 1897 (finding Board erred in limiting the weight accorded to the fame of opposer’s FRITO-LAY mark); Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992) (finding Board erred in discounting the significance of the fame of opposer’s mark PLAY-DOH); UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1883 (TTAB 2011) (finding MOTOWN very famous in connection with musical recordings and musical entertainment, and noting that "a famous mark such as Motown can be expected to cast a long shadow and to be used in connection with numerous collateral goods").

When present, the fame of a mark is "a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods." Recot, 214 F.3d at 1328, 54 USPQ2d at 1898 (noting that "the fame of the mark must always be accorded full weight when determining likelihood of confusion"); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that "a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark" and that "the fame of a registered or previously used mark can never support a junior party"); see Tiger Lily Ventures, 35 F.4th at 1364-65, 2022 USPQ2d 513, at *8-9 (noting that applicant's attempt to benefit from the fame of the LEHMAN BROTHERS mark played a "dominant role in the process of balancing the [du Pont] factors" (quoting Bose, 293 F.3d at 1371, 63 USPQ2d at 1305)).

However, like the other du Pont factors, the fame of a mark may be considered only if there is relevant evidence of record. See TMEP §1207.01. Thus, a party who asserts that its mark is famous must submit evidence clearly establishing that its mark is viewed by relevant purchasers as a famous mark. See In re Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998) . The fame of a mark may be shown by evidence of, inter alia, the quantity of sales of products bearing the mark, the amount of advertising expenditures relating to the mark, and the length of time such indications of commercial awareness have been evident. See Bose, 293 F.3d at 1371, 63 USPQ2d at 1305-06.

Because of the nature of the evidence required to establish the fame of a registered mark, the Board normally does not expect the examining attorney to submit evidence as to the fame of the cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d at 1027 n.11 ; see also In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086-88 (TTAB 2016) (considering and finding persuasive examining attorney’s evidence of fame of the registered mark JAWS, but reiterating that examining attorneys are not expected to submit evidence of fame). And, in an ex parte analysis of the du Pont factors for determining likelihood of confusion (see TMEP §1207.01), the "fame of the mark" factor is normally treated as neutral when no evidence as to fame has been provided. See id.; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark "is not particularly significant in the context of an ex parte proceeding").

1207.01(d)(x)    Conflicting Marks Owned by Different Parties

During the examination of an application, the examining attorney should consider separately each registration found in a search of the marks registered in the USPTO that may bar registration of the applicant’s mark under §2(d). If the examining attorney finds registrations that appear to be owned by more than one registrant, he or she should consider the extent to which dilution may indicate that there is no likelihood of confusion. However, the examining attorney must cite all the marks that are considered to be a bar to registration of the mark presented in the application, even if they are owned by different parties. The examining attorney should always explain the reason that the mark in each cited registration is grounds for refusal under §2(d).

1207.01(d)(xi)    Family of Marks

A family of marks is defined as "a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner." J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The common element may be a term, a phrase, or a component in the nature of a prefix or suffix.

In such cases, "[o]wnership of multiple registrations containing the alleged family feature or term is not sufficient, in and of itself, to establish that a party owns a family of marks"; "common law rights in the alleged family" must be established. Shenzhen IVPS Tech. Co., v. Fancy Pants Prods., LLC, 2022 USPQ2d 1035, at *15-16 (TTAB 2022) (citing New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *7 (TTAB 2020); In re Globe-Union Inc., 189 USPQ 158, 160 (TTAB 1975)). Thus, it is necessary to consider "the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin." J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d at 1463, 18 USPQ2d at 1891-92.

The family of marks doctrine may be invoked by a plaintiff in inter partes proceedings relating to likelihood of confusion, but is not available to a defendant as a defense against an opposer’s or applicant’s intervening rights. Baroid Drilling Fluids Inc. v. Sun Drilling Prods., 24 USPQ2d 1048 (TTAB), amended by 1992 TTAB LEXIS 27 (TTAB 1992).

A family of marks argument is not available to an applicant seeking to overcome a likelihood of confusion refusal in an ex parte proceeding; instead, the focus of the likelihood of confusion analysis must be on the mark applicant seeks to register, not other marks applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) ; see also In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965) ("[I]n view of the specific prohibition of Section 2(d) . . ., the fact that applicant may possess a ‘family’ of marks characterized by the term ‘ALD’ is of no particular significance herein if the mark for which applicant now seeks registration . . . is confusingly similar to the previously registered mark . . . .").

It has also been noted that, in ex parte proceedings, examining attorneys do not have access to the evidence and information needed to establish whether a family of marks exists. In re Mobay Chem. Co., 166 USPQ 218, 219 (TTAB 1970) . Therefore, examining attorneys should refrain from invoking the family of marks doctrine or from referring to a family of marks in a likelihood of confusion analysis. See In re Hitachi High-Techs. Corp., 109 USPQ2d 1769, 1772 (TTAB 2014) ; In re Mobay Chem. Co., 166 USPQ at 219.

See TMEP §1212.06(e)(v) regarding the use of evidence of a family of marks to support of a claim of acquired distinctiveness.

1207.01(d)(xii)    Pharmaceuticals or Medicinal Products

When determining if a likelihood of confusion exists between marks used in connection with pharmaceuticals or medicinal products for human use, greater care must be taken to avoid confusion because mistakes in the selection and use of these goods may result in serious and harmful consequences. See Clifton v. Plough, Inc., 341 F.2d 934, 934, 144 USPQ 599, 600 (C.C.P.A. 1965) ; In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1381-82 (TTAB 2012) ; Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB 1980) ; Am. Home Prods. Corp. v. USV Pharm. Corp., 190 USPQ 357, 359-60 (TTAB 1976) . Thus, in cases where confusion involving pharmaceuticals or medicinal products could result in harm or other serious consequences to consumers, the Trademark Trial and Appeal Board and its primary reviewing court have considered this an additional relevant factor and applied a stricter standard that may require a lesser degree of proof to establish likelihood of confusion. See Glenwood Labs., Inc. v. Am. Home Prods. Corp., 455 F.2d 1384, 1386-87, 173 USPQ 19, 21-22 (C.C.P.A. 1972) ; Schering Corp., 207 USPQ at 509; Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (TTAB 1976) . But see Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1478 (TTAB 2016) (considering opposer’s arguments based on safety concerns about potential consumer confusion regarding opposer’s ice cream and applicant’s medicine, but finding that "any problems arising from the abuse or misuse of Applicant's medicine, whether potential or actual, has no demonstrated relationship to the identical trademarks under which Applicant's medicine and Opposer's ice cream are sold").

1207.02    Marks That Are Likely to Deceive

In addition to referring to a mark that so resembles another mark as to be likely to cause confusion or mistake, §2(d) refers to a mark being likely "to deceive." As a practical matter, this provision is rarely applied in examination, because deceptiveness involves intent and would be difficult to prove in an ex parte proceeding.

1207.03    Marks Previously Used in United States but Not Registered

As a basis for refusal, §2(d) refers not only to registered marks but also to "a mark or trade name previously used in the United States by another and not abandoned." Refusal on the basis of an unregistered mark or trade name has sometimes been referred to as refusal on the basis of a "known mark." This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating "previously used" marks, and determining whether anyone has rights in them and whether they are "not abandoned."

1207.04    Concurrent Use Registration

1207.04(a)    Concurrent Use – In General

Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),  contains a proviso under which an eligible applicant may request issuance of a registration based on rights acquired by concurrent use of its mark, either with the owner of a registration or application for a conflicting mark or with a common-law user of a conflicting mark.

In a concurrent use application, the applicant normally requests a geographically restricted registration. See TBMP §§1101.01, 1103.01(d)(2). The applicant seeks registration for a specified geographical area of the United States and lists one or more parties who concededly have rights in the mark in other geographical areas of the United States. See15 U.S.C. §1051(a)(3)(D);  37 C.F.R. §2.42(b); TBMP §§1102.01, 1103.01. These other parties may own applications or registrations, or they may have common law rights in a mark, but no application or registration. TBMP §1104.

There are two bases upon which a concurrent use registration may be issued: (1) a determination by the Trademark Trial and Appeal Board, in either a prior or to-be-instituted concurrent use proceeding, that the applicant is entitled to a concurrent registration; or (2) a final determination by a court of competent jurisdiction of the concurrent rights of the relevant parties to use the same or similar marks in commerce. See15 U.S.C. §1052(d);  37 C.F.R. §2.99; TBMP §1102.02.

"Incontestable" registrations (i.e., where the registrant’s right to use the mark has become incontestable pursuant to 15 U.S.C. §1065 )  are subject to concurrent use registration proceedings. TBMP §1105; see Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 319-20, 189 USPQ 630, 636 (C.C.P.A. 1976) ; Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330, 334 (TTAB 1980) .

Registrations and applications to register on the Supplemental Register and registrations under the Act of 1920 (see TMEP §1601.05) are not subject to concurrent use registration proceedings. 37 C.F.R. §2.99(g); TBMP §1105.

Concurrent use registration is requested by the applicant; it should not be suggested or initiated by the examining attorney.

1207.04(b)    Filing Basis of Application Seeking Concurrent Use Registration

Before seeking concurrent use, an applicant must assert use in commerce in its application and include in the application all the application requirements for a trademark, service mark, collective mark, or certification mark. 37 C.F.R. §2.42(a). For information regarding specific application requirements, see TMEP §§801-806.01(e) for trademarks and service marks, TMEP §1303.01 for collective trademarks and collective service marks, TMEP §1304.02 for collective membership marks, and TMEP §1306.02 for certification marks.

If an application is based on use in commerce under §1(a) of the Trademark Act, the applicant may seek concurrent use registration at the time the application is filed or in a subsequent amendment. See 37 C.F.R. §§2.42(a), 2.73. For information regarding amending to concurrent use, see 37 C.F.R. §2.73.

If an application is based on a bona fide intent to use the mark in commerce under §1(b) of the Trademark Act, the applicant may not amend to seek concurrent use registration until the applicant files an acceptable allegation of use. See 37 C.F.R. §§2.73, 2.99(g).

Applications based solely on §44 or §66(a) of the Trademark Act are not subject to concurrent use registration proceedings. 37 C.F.R. §2.99(g).

1207.04(c)    Criteria for Requesting Concurrent Use Registration

An applicant is eligible to request a registration subject to concurrent use if it meets one or more of the following criteria:

• (1) The concurrent use request is sought pursuant to a decree of a court of competent jurisdiction (or a decision by the Board in a prior concurrent use proceeding) reflecting a final determination of the rights of the concurrent user;
• (2) The owner of the registration consents to the grant of a concurrent use registration to the applicant; or
• (3) The applicant’s date of first use in commerce is before the filing date of the pending applications or of any registrations issued under the Trademark Act of 1946. When a party specified as an excepted user does not own an application or registration, the applicant’s date of first use in commerce is before the filing date of any application to register the mark that may be filed by the excepted user.

See15 U.S.C. §1052(d);  37 C.F.R. §2.99(e). The applicant has the burden of proving that it is entitled to a concurrent use registration. 37 C.F.R. §2.99(e); Hanscomb Consulting, Inc. v. Hanscomb Ltd., 2020 USPQ2d 10085, at *4 (TTAB 2020) (citing Stawski v. Lawson, 129 USPQ2d 1036 (TTAB 2018)); America's Best Franchising, Inc. v. Abbott, 106 USPQ2d 1540, 1548 (TTAB 2013) (quoting Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 883 (TTAB 1985)).

1207.04(d)    Requirements for All Concurrent Use Applications

An application for registration as a lawful concurrent user is generally examined in the same manner as any other application for registration. 37 C.F.R. §2.99(a). The examining attorney must examine the application to determine whether it complies with the relevant requirements for a non-restricted application.

1207.04(d)(i)    Concurrent Use Application for a Trademark or Service Mark

In addition to the requirements for a trademark or service mark application (see TMEP §§801-806.01(e)), a concurrent use application must include a verified statement in which the applicant attests to certain information. See 37 C.F.R. §2.42(b).

The required verified statement must include the following:

• (1) the applicant’s goods and/or services, the geographic area in which the applicant is using the mark in commerce, and the mode of use for which the applicant seeks registration;
• (2) the concurrent users’ names and addresses, the concurrent user’s goods and/or services, and the registrations issued to or applications filed by the concurrent users (if any), to the extent known by the applicant; and
• (3) the geographic areas in which the concurrent user is using the mark in commerce, the mode of use by the concurrent users, and the time periods of such use by the concurrent users, to the extent known by the applicant.

See 15 U.S.C. §§1051(a)(3)(D), 1053; 37 C.F.R. §2.42(b); TBMP §1101.

For a §1(a) application, an applicant must also modify the verified statement required for an unrestricted application under 37 C.F.R. §2.33(b)(1)  (see TMEP §804.02) to indicate an exception, i.e., that no other person except as specified in the application has the right to use the mark in commerce. 37 C.F.R. §2.33(f); see 15 U.S.C.  §1051(a)(3)(D).

The applicant does not have to insert the information in the list above directly in the verification or declaration at the end of the application; this information may be set forth anywhere in the application as long as it is attested to by the applicant.

In addition to the requirements noted above, concurrent use applications must meet other conditions, depending on whether the application is subject to a concurrent use proceeding before the Board (see TMEP §§1207.04(e)-(e)(i)), pursuant to the decree of a court (see TMEP §§1207.04(f)-(f)(i)), or based on a final decision by the Board in a prior concurrent use proceeding (see TMEP §§1207.04(g)-(g)(i)).

1207.04(d)(ii)    Concurrent Use Application for a Collective or Certification Mark

In addition to the requirements for a collective or certification mark application (see TMEP §§1303.01, 1304.02, 1306.02), a concurrent use application must include a verified statement in which the applicant attests to certain information. See 37 C.F.R. §2.42(b).

The required verified statement must include the following, to the extent known by the applicant:

• (1) the applicant’s members’ or authorized users’ goods and/or services, for a collective trademark, collective service mark, or certification mark, or the nature of the applicant’s collective membership organization, for a collective membership mark;
• (2) the geographic area in which the applicant’s members or authorized users are using the mark in commerce and the mode of use for which the applicant seeks registration;
• (3) the concurrent users’ names and addresses and the registrations issued to or applications filed by the concurrent users (if any);
• (4) the concurrent user’s members’ or authorized users’ goods and/or services, for a collective trademark, collective service mark, or certification mark, or the nature of the concurrent user’s collective membership organization, for a collective membership mark; and
• (5) the geographic areas in which the concurrent user’s members or authorized users are using the mark in commerce, the mode of use by the concurrent users’ members or authorized users, and the time periods of such use by the concurrent users’ members or authorized users.

See 15 U.S.C. §§1051(a)(3)(D)  ,1054; 37 C.F.R. §2.42(b); TBMP §1101.01.

For a §1(a) collective mark application, an applicant must also modify the verified statement required for an unrestricted application under 37 C.F.R. §2.44(a)(4)(i)(D)  (see TMEP §§1303.01(b)(i), 1304.02(b)(i)) to indicate an exception, i.e., that no other persons except members and the concurrent user(s) as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.44(d); see 15 U.S.C. §§1051(a)(3)(D),  1054.

For a §1(a) certification mark application, an applicant must also modify the verified statement required for an unrestricted application under 37 C.F.R. §2.45(a)(4)(i)(F)  (see TMEP §1306.02(b)(i)) to indicate an exception, i.e., that no other persons except authorized users and concurrent user(s) as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.45(d); see 15 U.S.C. §§1051(a)(3)(D),  1054.

The applicant does not have to insert the information in the list above directly in the verification or declaration at the end of the application; this information may be set forth anywhere in the application as long as it is attested to by the applicant.

In addition to the requirements noted above, concurrent use applications must meet other conditions, depending on whether the application is subject to a concurrent use proceeding before the Board (see TMEP §§1207.04(e)-(e)(i)), pursuant to the decree of a court (see TMEP §§1207.04(f)-(f)(i)), or based on a final decision by the Board in a prior concurrent use proceeding (see TMEP §§1207.04(g)-(g)(i)).

1207.04(e)    Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board

Ordinarily, the examining attorney should not require an applicant for concurrent use registration to submit evidence in support of its claim to concurrent rights. However, the examining attorney should refuse registration under §2(d) if the applicant has requested a concurrent use registration and information in the record suggests that the applicant has not met the basic requirements for concurrent use registration (e.g., if the application indicates that the applicant adopted and used the mark with knowledge of the superior rights of a person specified as an excepted user, or that actual confusion has resulted from the concurrent use of the marks of the parties in their respective geographic areas). See Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526-27, 3 USPQ2d 1306, 1308-09 (Fed. Cir. 1987); America's Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1549 (TTAB 2013) (citing In re Beatrice Foods Co., 429 F.2d 466, 472-73, 166 USPQ 431,435-36 (C.C.P.A. 1970)); In re The Place for Vision, Inc., 196 USPQ 267, 269-70 (TTAB 1977) .

If an application that seeks registration through a concurrent use proceeding before the Board complies with the relevant requirements and it appears that the applicant is otherwise entitled to registration but for the question of concurrent rights, the examining attorney will approve the application for publication subject to a concurrent use proceeding. See 15 U.S.C. §1062(a).  The examining attorney must not issue a refusal under §2(d) as to any registration named by the applicant as an exception to its exclusive rights.

If, in response to a refusal under §2(d) or an advisory regarding an earlier-filed application, an application is amended to seek registration through a concurrent use proceeding and complies with the relevant requirements, and it appears that the applicant is otherwise entitled to registration but for the question of concurrent rights, the examining attorney will withdraw the previously issued refusal or advisory as to any registration or application named by the applicant as an exception to its exclusive rights and will approve the application for publication subject to a concurrent use proceeding.

1207.04(e)(i)    Preparing the Record for Publication

When the examining attorney determines that the mark in an application that is subject to a concurrent use proceeding is ready for publication, the examining attorney should prepare the record as follows. The application must contain a concurrent use statement that will be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. Pursuant to TBMP §1103.01(f),  the statement must be in the following form:

Subject to Concurrent Use Proceeding with ____________ [specifying the application serial number(s) or registration number(s), if any, of each other party; otherwise, the name and address of each other party].

Applicant claims the exclusive right to use the mark in the area comprising _____________ [specifying the area for which the applicant seeks registration].

After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the Trademark Trial and Appeal Board will institute the concurrent use proceeding. See 37 C.F.R. §2.99; TMEP §1506. The Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding. 37 C.F.R. §2.99(h).

See TBMP Chapter 1100 regarding concurrent use proceedings.

1207.04(f)    Application for Concurrent Use Registration Pursuant to Court Decree

The USPTO may issue a concurrent use registration pursuant to the final determination of a court of competent jurisdiction that more than one person is entitled to use the same or similar marks in commerce. 15 U.S.C. §1052(d).  An applicant who seeks a concurrent use registration on the basis of a court determination does not have to be a prior user or obtain the consent of the owner of the involved mark. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 317-18, 189 USPQ 630, 633-34 (C.C.P.A. 1976) ; cf. Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 690-94, 130 USPQ 412, 417-20 (C.C.P.A. 1961) ; TBMP §1103.03.

When examining an application for concurrent use registration pursuant to the decree of a court, the examining attorney must determine whether the application complies with the specific requirements for concurrent use applications (see TMEP §1207.04(d)(i)-(ii)) and the requirements that would apply to an unrestricted application (see TMEP §§801-806.01(e) for trademarks and service marks, 1303.01 for collective trademarks and collective service marks, 1304.02 for collective membership marks, and 1306.02 for certification marks).

In addition, under 37 C.F.R. §2.99(f), all the following conditions must be met, or a concurrent use proceeding before the Board must be prepared and instituted:

• (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding;
• (2) The court decree specifies the rights of the parties;
• (3) A true copy of the court decree is submitted to the examining attorney;
• (4) The concurrent use application complies fully and exactly with the court decree; and
• (5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted by the Director in accordance with the court decree.

If any of the conditions listed above are not satisfied, the examining attorney will approve the application for publication subject to a concurrent use registration proceeding before the Board (see TMEP §§1207.04(e), (e)(i)), rather than pursuant to the court decree. See 37 C.F.R. §2.99(f).

1207.04(f)(i)    Preparing the Record for Publication

If the application complies with all the conditions listed in TMEP §1207.04(f) and all other relevant requirements, and is otherwise entitled to registration, the examining attorney will approve the application for publication of the mark. The examining attorney should prepare the record as follows:

The application must contain a concurrent use statement to be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. Pursuant to TBMP §1103.03, the statement must delineate the concurrent rights of the parties as determined by the court, in the following form:

Registration limited to the area comprising __________ [specifying the area granted to the applicant by the court and any other restriction designated by the court] pursuant to the decree of ______________ [specifying the name of the court, proceeding number, and date of the decree].

Concurrent registration with ________________ [specifying the application serial number(s) or registration number(s), if any, of each other party; otherwise, the name and address of each other party].

After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the application will mature into a registration.

1207.04(g)    Application for Concurrent Use Registration Based on Final Board Decision in Prior Concurrent Use Proceeding

A concurrent use registration may also be based on a final determination by the Trademark Trial and Appeal Board, in a prior concurrent use proceeding, that applicant is entitled to a concurrent use registration of its mark. TBMP §1103.02.

When examining an application for a concurrent use registration based on a final Board decision in a prior concurrent use proceeding, the examining attorney must determine whether the application complies with the specific requirements for concurrent use applications (see TMEP §1207.04(d)(i)-(ii)) and all other requirements that would apply to an unrestricted application.

In addition, pursuant to TBMP §1103.02, the following conditions must be met:

• (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party or parties to the prior concurrent use proceeding;
• (2) The Board’s prior decision specifies applicant’s right to concurrent use registration;
• (3) A copy of the Board’s prior decision is submitted to the examining attorney;
• (4) The concurrent use application complies with the Board’s prior decision, in that it seeks registration for the same, or a more limited, geographic area or mode of use than granted to the applicant in the prior decision; seeks registration for substantially the same mark or one less confusingly similar to those of the other party or parties in the prior proceeding; and seeks registration for substantially the same goods/services/collective membership organization as, or more limited goods/services/collective membership organization than those listed in the Board’s prior specification of the applicant’s entitlement to concurrent registration; and
• (5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted by the Director in accordance with the Board’s prior decision.

If the conditions listed above are satisfied, the examining attorney must ensure that the appropriate concurrent use statement for registration based on a final determination by the Board in a prior concurrent use proceeding is entered into the Trademark database (see TMEP §1207.04(g)(i)) and approve the application for publication. See TBMP §1103.02.

If any of the conditions listed above are not satisfied, the examining attorney will approve the application for publication subject to a new concurrent use registration proceeding before the Board (see TMEP §§1207.04(e), (e)(i)), rather than pursuant to a final decision of the Board in a prior concurrent use proceeding. See TBMP §1103.02.

1207.04(g)(i)    Preparing the Record for Publication

If the application satisfies all the conditions listed in TMEP §1207.04(g), complies with all other relevant requirements, and is otherwise entitled to registration, the examining attorney will approve the application for publication of the mark. The application must contain a concurrent use statement to be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. Pursuant to TBMP §1103.02, the statement must delineate the concurrent rights of the parties as determined by the Board, in the following form:

Registration limited to the area comprising __________ [indicating the area specified in the Board’s prior decision as the area for which applicant is entitled to registration and any other restriction designated by the Board] pursuant to Concurrent Use Proceeding No. ______________ [specifying the number of the prior concurrent use proceeding].

Concurrent registration with ________________ [specifying the application serial number(s) or registration number(s), if any, of each other party involved in the prior concurrent use proceeding; otherwise, the name and address of each other party].

After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the application will mature into a registration.