Tuesday, September 23, 2014

TTAB Reverses Section 2(b) Refusal of WORLD LITERACY DAY With Flags

In a rare Section 2(b) decision, the Board reversed a refusal to register the mark shown below, for various goods and services, finding that the mark does not consist of or comprise the flags of the United States or foreign nations. "[T]he flags are not being displayed as flags, but rather are incorporated into the design as torsos of individuals," signifying "the international aspect of Applicant's goods and services," said the Board. In re 3P Learning Pty Ltd., Serial No. 85641327 (as amended, September 30, 2014) [not precedential].

Section 2(b) of the Trademark Act, in pertinent part, prohibits registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia of the United States ... or of any foreign nation, or any simulation thereof." The examining attorney maintained that the flags in applicant's mark "remain in their usual rectangular shape with the same proportions and designs of their countries [sic] usual flags." She pointed out that the flags are not highly stylized or changed, and contended that even in black and white they are readily recognizable.

Paris Convention: Applicant argued that its mark has been registered in two Paris Convention countries that, "like the United States, prohibit marks containing flags of member countries," and therefore it should be allowed to register here. The Board pointed out, however, that the Paris Convention, and particularly Article 6ter, provides a "baseline for protection, but it does not impose a cap on how restrictive a country may be in prohibiting registration of symbols, including flags."

"[T]he Paris Convention is essentially a treaty between the various member countries by which each member country accords to citizens of the other contracting countries the same trademark and other rights accorded to its own citizens by its domestic law. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as if they were citizens of that country. The Paris Convention is not premised upon the idea that trademark laws of each member nation shall be given extraterritorial application, but on exactly the converse principle that each nation’s law shall only have territorial application.” International Finance Corp. v. Bravo Company, 64 USPQ2d at 1601-02."

In short, "how others jurisdictions apply the Paris Convention Article 6ter under their domestic laws, in any particular case, is not instructive."

2(b) or not 2(b)?:  The Board acknowledged that the flags in applicant's mark are not "stylized in such a manner to blur the flag design." But use of the flags as the torsos of individuals "is not a traditional flag design."

In assessing a mark in view of the Section 2(b) prohibition, the Board must consider "the commercial reaction that it imports to viewers." Although generally recognizable, the flags in the applied-for mark "do not have the commercial impression of national flags but rather as designations of individuals from various nations."

The Board distinguished the applied-for mark from the example provided by the examining attorney (below), in which the flag is attached to a guitar that functions as a flag pole. Here, the flags are not being displayed as flags but instead appear as torsos of individuals, signifying the international nature of applicant's goods and services.

And so the Board reversed the refusal.

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Text Copyright John L. Welch 2014.


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