Tuesday, November 25, 2008

TTAB Reverses 2(b) Refusal of Mark Containing Portion of Canadian Flag

In its first decision under Section 2(b) in decades, the Board reversed a refusal to register the mark shown immediately below, for painting services, finding that it does not contain a simulation of the flag of Canada or an insignia of Canada. In re Certa ProPainters, Ltd., Serial No. 77046679 (November 14, 2008) [not precedential].

Section 2(b) bars the registration of a mark that "consists of or comprises the flag or coat of arms or other insignia of ... any foreign nation, or any simulation thereof." [TTABlog comment: the phrase "or any simulation thereof" refers to flag, coat of arms, or insignia, not to the foreign nation. Perhaps the provision could have been better drafted.]

The term "other insignia" has not been given a broad scope, but "is considered to include only those emblems and devices that also represent such authority and that are of the same general class and character as flags or coats of arms." Incorporation of individual feature or distorted features that merely suggest flags, coats of arms, or other insignia do not bar registration.

The Board found PTO Examination Guide 2-07 helpful:

"A refusal must be issued if the design would be perceived by the public as a flag, whether or not other matter appears with or on the flag. The examining attorney should consider the following factors, in regard to both color 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 the designs on the drawing; 4) use of the mark on the specimens.

"Generally a refusal should be made where a black-and-white drawing contains unmistakable features of the flag, or contains features of the flag along with indicia of a nation..."

In 1965, the Canadian Parliament adopted the flag depicted below as the Canadian national flag.

The Board noted that Applicant's mark "does not include the entirety of the actual Canadian flag." But is it a "simulation"? Answering that question requires "a first impression gathered from a view of such mark without a careful analysis and side-by-side comparison with the [actual flag]."

Although the subject mark includes "a majority of the flag's features" but not the 1:2:1 ratio of the stripes or bars, the Board must "balance these considerations against the overall visual impression made by the mark."

The Board observed that "the maple leaf and bar design does not look like the Canadian flag or a simulation of the flag." "[T]he view must still provide substantial, additional details to complete the image of the flag of Canada." In the Board's view, the design "only suggests the Canadian flag, and is not a simulation of the flag."

"Applicant's mark simply suggests the Canadian origin of its services in the same manner that a red, white and blue design with stars suggests an American product." [TTABlog note: Applicant is a Massachusetts company, so how are its services of Canadian origin?]

The Board noted that its decision is in accord with the Examination Guide, which states that "[m]arks containing elements of flags in stylized or incomplete form are not refused under Section 2(b)." Registration should not be refused, according to the Guide, if "[a] significant feature is missing of changed." As examples, the following are registrable:

obscured by other matter

significant feature changed

In Applicant's mark, the Canadian flag is "significantly changed" and the missing flag portion is replaced by wording. Therefore in this regard the mark does not run afoul of Section 2(b).

The PTO also maintained that the mark includes an official insignia of Canada: the 11-pointed maple leaf. The Board, however, found that the leaf design is not an "insignia" that is prohibited by Section 2(b). There was no evidence that this design, per se, has been adopted by Canada as an "insignia" to represent the government. Although it may serve as a national symbol of Canada (like the Statue of Liberty serves as a symbol of the USA), it does not qualify for protection as an "insignia" under Section 2(b).

The Board therefore reversed the refusal to register.

Text Copyright John L. Welch 2008.


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