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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of: «Name of Applicant»

Serial Number: «Serial Number»

Filed: «Filing Date»

Mark: «Trademark»

RESPONSE TO OFFICE ACTION

COMES NOW the Applicant «Name of Applicant» (hereinafter “Applicant”), by counsel,

and provides the instant response to the refusal to register the applied-for trademark under §2(b)

of the Trademark Act of 1946 (hereinafter “the Act”). For the reasons and as more fully set forth

below, Applicant respectfully requests that the refusal be withdrawn and the trademark permitted

to register.

Standard for a refusal under §2(b) of the Act

The text of §2(b) of the Act reads as follows:

“No trademark by which the goods of the applicant may be distinguished from the goods of

others shall be refused registration on the principal register on account of its nature unless ... it

consists 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.”

15 U.S.C. 1052 (b)

If a proposed mark contains the entirety of a specific flag, coat of arms, or other insignia

of the United States, then that mark must be refused registration.

However, 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). Knorr-

Nahrmittel A.G. v. Havland International, Inc., 206 USPQ 827, 833 (TTAB 1980) Even when a

mark contains significant elements of a flag or other insignia, a refusal under §2(b) is not

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appropriate if the mark does not depict the insignia in its entirety or does not depict the insignia in

the same colors as the official symbol. In re Certa ProPainters, Ltd., LEXIS 165, 11-12 (TTAB

2008)

Thus, the Examining Attorney must determine whether the design element in question is

an “individual or distorted feature” which is merely suggestive of the official insignia, or whether,

in the alternative, the design is a prohibited “simulation” of an official symbol.

The test of whether or not a simulation of an official insignia exists “must necessarily be

one of first impression gathered from a view of such mark without a careful analysis and side-by-

side comparison with [the actual flag]. Focus must be on general recollection of the [flag] by

purchasers, and a comparison of it with applicant's mark.” Id. See In re Advance Industrial

Security, Inc., 194 USPQ 344, 346 (TTAB 1977). See also In re Waltham Watch Co., 179 USPQ

59, 60 (TTAB 1973).

The Board has further explained the test of the “simulation” issue as relating to the

national flag of the United States:

“We emphasize that the test is not whether purchasers will be able to guess that the mark

is suggesting a national flag. If that were the case, many marks that suggest the American

flag by incorporating a stylized red, white and blue design with stars would be barred

from registration under Section 2(b). We do not read the prohibitions of Section 2(b) to

reach such marks.”

In re Certa ProPainters, Ltd., LEXIS 165, 11-12 (TTAB 2008)

The Trademark Manual of Examining Procedure (hereinafter “TMEP”) offers specific

guidance on this point in section 1204.01(b), under the heading “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.

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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.

The TMEP goes on to provide examples of images which are registrable despite containing

design elements in common with the American flag. The following mark is the example of a

permissible design wherein a significant feature of the American flag is changed:

The design is also permissible when the flag appears in colors which are different from

those normally used in the national flag, as in the mark here:

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The Board has adhered to the guidelines found in the TMEP, reversing a refusal to register

a mark on §2(b) grounds when the mark contained the Star of David insignia in a color other than

that used in the national flag of Israel. 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.")

Argument in Support of Registration

The applicant’s proposed mark is:

«Trademark»

Examining the trademark consists of «Description of the Trademark».

The Examining Attorney asserts that the proposed mark is «Trademark Refusal».

Applicant respectfully disagrees with the Examining Attorney. The presence of arguably

similar design elements does not alone warrant a refusal under §2(b). In the Examining Attorney’s

recitation of the similarities between Applicant’s trademark and «Flag or Coat of Arms» there is

little if no mention of the distinct elements and stylization of Applicant’s mark that would, in the

eyes of the consuming public, remove the similarity thereof apart from the «Flag or Coat of Arms»

referenced.

As such, it is inaccurate to assert that the mark resembles the «Flag or Coat of Arms» in

every sense when Applicant’s trademark «Difference between Trademark and Flag Cited».

Recalling the examples found in the TMEP of stylized designs which should not be refused, images

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which clearly suggest the image of the flag but which contain a significant element which is

changed, including color, are not prohibited “simulations” under § 2(b).

The national flag of the United States was adopted in 1942 by a joint resolution of

Congress, which described it using the following language, which can be found at 4 U.S.C.§1 “The

flag of the United States shall be thirteen horizontal stripes, alternate red and white; and the union

of the flag shall be forty-eight stars, white in a blue field”. In In re Am. Red Magen David for

Israel, 222 USPQ 266, 267 (TTAB 1984), the Board refused to extend § 2(b) to insignia which

appear in colors other than those officially adopted by the national government represented. As

such, a design which incorporates an image of the American flag in colors other than those

officially adopted by Congress, such as the Applicant’s mark, should not be refused registration

on § 2(b) grounds.

In the instant case, it is submitted that the depiction of the trademark at issue is distorted

or stylized sufficiently to permit registration of the trademark at issue pursuant to the TMEP as

interpreted in Knorr-Nahrmittel A.G. See Knorr-Nahrmittel A.G.,206 USPQ at 833 (TTAB 1980).

CONCLUSION

WHEREFORE it is respectfully requested that the Examining Attorney withdraw the refusal

under § 2(b) and approve the instant application for publication upon the Principal Register.

Respectfully submitted Tuesday, September 12, 2017,

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«Name of Person Signing», «Title of Person Signing»

«Name of Applicant»