In a rare decision under Section 2(b) of the Lanham Act, the Board affirmed a refusal to register the mark shown below, for tourism promotional services, on the ground that the mark includes a simulation of the flag of the United States. The Board found that U.S. flag and applicant’s flag design “are highly similar and that the average member of the public would perceive Applicant’s flag design to be a simulation of an actual U.S. flag.” Applicant pointed in vain to various flag-containing registered marks, but the Board found them distinguishable and, in any case pointed out once again that each application to register must be considered on its own merits. In re Alabama Tourism Department, 2020 USPQ2d 10485 (TTAB 2020) [precedential] (Opinion by Judge Christopher Larkin).

Section 2(b) 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 State or municipality, or of any foreign nation, or any simulation thereof.” The Board has explained that this absolute bar to registration “reflects the sentiment that such insignia are symbols of government authority that ought to be reserved for signifying the government. In re Dist. of Columbia, 101 USPQ2d 1588, 1597 n.14 (TTAB 2012), aff’d sub nom In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).

The word “comprises” in Section 2(b) means “includes.” Family Emergency Room, 121 USPQ2d at 1887 n.2. “[T]he word ‘simulation’ in the statute ‘is used in its usual and generally understood meaning, namely, to refer to something that gives the appearance or effect or has the characteristics of an original item.'” Id. (quoting Advance Indus., 194 USPQ at 346). The question is “whether consumers will perceive matter in the mark as a flag.” Id. at 1888.

The TMEP instructs examining attorneys to consider the following factors that the Board found in Family Emergency Room to be appropriate in determining whether consumers will perceive matter in the mark 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).” TMEP § 1204.01(a) (citing Family Emergency Room, 121 USPQ2d at 1888 (discussing these factors in the context of the Swiss flag)).

These factors should be applied to both color and black-and-white drawings. TMEP Section 1204.01(a)

TMEP Section 1204.01(b) lists five scenarios under where registration should not be refused under § 2(b) and includes seven examples of registrable stylized designs of the American flag:

• 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.

Although the TMEP does not have the force of law [Hooray! I’ve been saying this for years – ed.], the Board held that “both sets of the ‘above standards, as set forth in the TMEP, are appropriate under the statute’ to consider in determining whether consumers will perceive a mark as consisting of or comprising a flag. Family Emergency Room, 121 USPQ2d at 1888.”

Applicant argued that the flag design in the subject mark (1) is missing significant features of the American flag, (2) forms another design, (3) is substantially obscured by other portions of the mark, and (4) is not in a shape normally seen.” It maintained that the USPTO’s registration of many marks that contain obvious flag elements justifies registration of its mark.

Examining Attorney William H. Dawe III argued that none of the five scenarios of TMEP Section 1204.01(b) applies here, that the flag depicted in the mark will be perceived as a simulation of a U.S. flag, and that each application must be examined on its own merits.

The determination of whether the mark is a prohibited simulation of the U.S. flag requires a “visual comparisonn of the [design] and the actual flag.” Family Emergency Room, 121 USPQ2d at 1887 (citing Waltham Watch, 179 USPQ at 60).

The Board found that the mark contains “unmistakable feature of the flag.” In fact, in applicant’s original description of the mark. it identified the flag as the “the U.S. flag.”  The reference to “U.S.” in the leaves no doubt that, as applicant originally stated, “the man in front [is] holding a stick bearing the U.S. flag over his shoulder.”

The Board found that U.S. flag and applicant’s flag design “are highly similar and that the average member of the public would perceive Applicant’s flag design to be a simulation of an actual U.S. flag.”

Applicant’s arguments that a number of features of the flag are missing missed the mark. The fact that the flag is displayed in this manner is not uncommon, and “no reasonable observer of that flag would believe that features are missing or changed, or view it as something other than the U.S. flag.”

Applicant’s mark is not incorporated into wording or into another design, as is the case in registered marks cited by the applicant. And in some registered marks, the flag design is depicted with significant features changed or missing.

The flag design in Applicant’s marks does not “form[ ] another design,” TMEP § 1204.01(b) (emphasis added), specifically, “a letter, number, or design,” id., such as “USA,” a map, or a torso, as contemplated under TMEP § 1204.01(b). As a result, this scenario is inapplicable to Applicant’s mark. [emphasis in original].

Nor is the flag “substantially obscured” by other elements in the mark, nor is the flag “not in the normal flag shape.” It is not elongated or  strangely shaped, as some of the examples in the TMEP. “It would be perceived as the U.S. flag or a simulation thereof.”

None of the four asserted scenarios in TMEP § 1204.01(b) applies to Applicant’s mark because the flag “design shown in the proposed mark is not sufficiently altered, stylized, or merged with the other elements in the mark, so as to create a distinct commercial impression, other than as a simulation of the [U.S.] flag.” Family Emergency Room, 121 USPQ2d at 1889.

Applicant strongly argued that, when other registered flag marks are considered, the refusal in this case is “clearly inconsistent with what this applicant had come to expect from the United States Patent and Trademark Office over the past decade of prosecuting several similar applications.” Applicant accused the examining attorney of a “refusal to address this need for consistent treatment at the Trademark Office is surely not an oversight as indeed, it would be impossible for the Examining Attorney to reconcile his decision to deny registration here with the decision to register or allow these other marks.” The Board was unimpressed.

He properly determined that the mark was unregistrable under the statute, and neither he nor we have any obligation “to reconcile his decision to deny registration here with the decision to register or allow . . . other marks.” *** In addition, Applicant’s evidentiary submission almost certainly presents an incomplete picture of USPTO practice, as it omits marks in applications that were refused registration under § 2(b) in a manner likely to be highly consistent with the action in this case.”

As stated by the CAFC in Nett Designs, 57 USPQ2d at 1566), “the Board (and this court in its limited review) must assess each mark on the record of public perception submitted with the application.”

The Board recently reiterated that “[w]hile we recognize that ‘consistency is highly desirable,’ . . . consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” In re Am. Furniture Warehouse Co., 126 USPQ2d 1400, 1407 (TTAB 2018) (quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) and citing In re Cordua Rests., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016)). We do not believe that our decision here is inconsistent with the registration of the third-party marks cited by Applicant, but to the extent that it is, it is the decision required under the statute on the record before us.

And so the Board affirmed the Section 2(b) refusal.

Read comments and post your comment here.

TTABlogger comment: Is there any doubt in you mind that this mark depicts the U.S. flag? How close is this to being a WYHA?

Text Copyright John L. Welch 2020.