Thursday, June 09, 2011

TTAB Rules That Kappa Alpha Fraternity Logo Does Not Violate Red Cross Statute

The Examining Attorney refused registration of the mark shown below, as a collective membership mark and as a trademark for "fabric flags," on the ground that the mark is not in lawful use in commerce because it violates the "Red Cross Statute," 18 U.S.C. Sec. 706. That statute, in pertinent part, prohibits unauthorized use of "the emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof." The Board reversed the refusal. In re Kappa Alpha Order, Serial Nos. 77463997 and 77464003 (June 3, 2011) [not precedential].

The Board observed that "[i]n an application seeking to register a mark based on use in commerce ... that use must be lawful." If the use is unlawful, including use in violation of a federal statute, registration is refused under Sections 1 and 45 of the Act.

For a refusal based on "unlawful use," it must be shown either that the issue of compliance with the statute has been determined by a court or government agency, or that there has been a per se violation of the statute.

Here, the issue was whether use of Applicant's mark constitutes a per se violation of the Red Cross statute. Because that statute is penal in nature, it must be strictly construed.

The Board found that Applicant's mark does not "use[] the emblem of the Greek red cross on a white ground," nor does in constitute "a sign or insignia made or colored in imitation thereof."

We find that the mark clearly depicts a Greek red cross. However, we find that when the mark is viewed as a whole, the distinctive shield design upon which the Greek red cross appears cannot be said to be merely a “white ground” within the meaning of the statute. Also, we find that the presence of the prominent red letters “KA” on the shield further serves to make the mark, when viewed in its entirety, more than merely “the emblem of the Greek red cross on a white ground.”

The Board therefore reversed the refusal.

TTABlog note: For a case in which unlawful use was found based on a prior court judgment, see the 2010 "HERE'S JOHNNY" precedential decision [TTABlogged here].

Text Copyright John L. Welch 2011.


At 2:49 PM, Anonymous Anonymous said...

Wow, this is going to stir things up at the Office. This has been a strict prohibition for years now, with any red cross on a white background being prohibited. They basically allow applicants to change to a black/white drawing to avoid refusal, simple as that. I've seen many OG bounces based on this statute (see TMEP 1205.01), and in fact it appears these applications were bounced as well, thus basically forcing the EA to issue the refusal and take it to the TTAB. Good for this applicant for fighting back. I never understood the blanket prohibition, and this case illustrates some refreshing common sense by the Board. I think the OG dept should retroactively withdraw the error for this examiner (yes, I'm a former examiner).


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