Shabby Chic Brands, LLC

This Opinion is a

Precedent of the TTAB

Hearing: January 11, 2017 Mailed: March 31, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Shabby Chic Brands, LLC

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Serial No. 85135970

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Jill M. Pietrini of Sheppard Mullin Richter & Hampton LLP,

for Shabby Chic Brands, LLC.

Stephanie M. Ali, Trademark Examining Attorney, Law Office 109,

Michael Kazazian, Managing Attorney.

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Before Zervas, Shaw, and Kuczma

Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

Shabby Chic Brands, LLC (“Applicant”) seeks registration on the Principal

Register of the following mark,

Serial No. 85135970

for a variety of furniture and decorative housewares, in International Class 20;

household and kitchen utensils, in International Class 21; and textile goods, in

International Class 24.1 The description of the mark reads: “The mark consists of a

design of an ornate, feathered crown.” The initials “SC” appear on the front of the

crown, and color is not claimed as a feature of the mark. Applicant claims ownership

of two prior registrations, Registration Nos. 2898987 and 2967641, now expired, for

the following related marks for similar goods:

2 3

The Trademark Examining Attorney refused registration of Applicant’s mark

under Section 2(b) of the Trademark Act, 15 U.S.C. § 1052(b), on the grounds that the

proposed mark includes a simulation or design that resembles a governmental

insignia of the United Kingdom, namely, the official emblem of the Prince of Wales,

1 Application Serial No. 85135970 was filed on September 22, 2010, based upon Applicant’s

allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the

Trademark Act, 15 U.S.C. § 1051(b).

2 Registration No. 2967641, issued November 2, 2004, cancelled on June 5, 2015, for failure

to renew.

3 Registration No. 2967641, issued July 12, 2005, cancelled on February 19, 2016, for failure

to renew.

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Serial No. 85135970

as depicted in the designation filed by the Government of the United Kingdom in

accordance with the Paris Convention, shown below:

4

The case is fully briefed and the Board conducted a hearing on January 11, 2017.

We affirm the refusal to register.

Analysis

Section 2(b) of the Trademark Act provides, in relevant part, that,

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—

***

(b) 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).

The issue before us involves two questions. First, is the Prince of Wales’ emblem

an insignia of a foreign nation? Second, if so, does Applicant’s mark consist of or

comprise the insignia, or a simulation thereof? We address each question in turn.

4 Image from Serial No. 89001177, filed September 12, 2005. Discussed in more detail infra.

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Serial No. 85135970

A. Whether the Prince of Wales’ emblem is an insignia of a foreign nation

We begin with an examination of whether the Prince of Wales’ emblem falls within

the protections of Section 2(b) of the Trademark Act. Applicant, for the first time at

oral hearing, argues that the Prince of Wales’ emblem is not a coat of arms or other

insignia of a foreign nation and therefore, a Section 2(b) refusal is inappropriate. We

disagree.

The Prince of Wales is a member of the British royal family and is heir to the

throne of the United Kingdom.5 According to the “Titles and Heraldry” page of the

Prince of Wales’ official website, the emblem at issue here has a long association with

the Prince of Wales and is described as comparable to a coat of arms:

The Prince is strongly identified with his badge The Prince

of Wales’s Feathers, the use of which dates back to the 14th

Century and the time of Edward, The Black Prince, who

was the first Prince of Wales.

***

In addition to the feathers, The Prince has a coat of arms

with long historical links with the heraldry of his

ancestors. 6

Moreover, the Government of the United Kingdom identified the emblem as “[t]he

official emblem of the Prince of Wales” when it notified the World Intellectual

Property Organization (WIPO) in 2005, under the framework of the Paris convention,

that the Prince of Wales emblem is a ‘state emblem’ of the United Kingdom.7 WIPO

5Http://www.princeofwales.gov.uk/the-prince-of-wales/titles-and-heraldry, Office Action of

February 13, 2015, TSDR p. 2.

6 Id.

7 Serial No. 89001177, Office Action of June 18, 2014, TSDR pp. 2-3.

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Serial No. 85135970

transmitted the notification to the United States and the other Paris Union Members

under the framework provided for in Article 6ter of the Paris Convention for the

Protection of Industrial Property8 for the protection of “armorial bearings, flags, and

other State emblems, of the countries of the Union, official signs and hallmarks

indicating control and warranty.”9

Since the Paris Convention is not-self executing in the United States, domestic

legislation is required to implement the treaty. In re Rath, 402 F.3d 1207, 74 USPQ2d

1174, 1176 (Fed. Cir. 2005). The United States has implemented its obligations under

Article 6ter, in part, through Section 2(b). See generally In re District of Columbia,

101 USPQ2d 1588 (TTAB 2012), aff’d sub nom. In re City of Houston, 731 F.3d 1326,

108 USPQ2d 1226 (Fed. Cir. 2013); see also Trademark Manual of Examining

Procedure (TMEP) § 1205.02 (Jan. 2017). The notification process that the

Government of the United Kingdom used to communicate its emblem is designed to

assist Paris Union Members in identifying which emblems the notifying member

wishes to be considered for protection under the Convention. Once the United States

received the emblem notification, the USPTO assigned it a serial number specifically

identifying the entry as “non-registration data” and entered it into the USPTO search

database.10 This non-registration data is included in the USPTO’s search records to

assist Examining Attorneys when considering possible statutory refusals; the

8 International Convention for the Protection of Industrial Property, Mar. 20, 1883, as

revised at Stockholm on July 14, 1967 (“Paris Convention”) available at

http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html.

9 Article 6ter of the Paris Convention.

10 Serial No. 89001177, Office Action of June 18, 2014, TSDR pp. 2-3.

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Serial No. 85135970

information about the designation should be discovered in a search of the records. See

TMEP § 1205.02.

To be clear, Serial No. 89001177 in the USPTO’s search database is the

designation of the emblem from the Government of the United Kingdom under Article

6ter, but is not considered a U.S. registration. This designation provides notice to

those searching the USPTO database that the Government of the United Kingdom

identifies the emblem of the Prince of Wales as a State emblem. As a result, such a

designation may form the basis of a refusal to register in the United States under

Sections 2(a) or 2(b) of the Trademark Act, depending upon the nature and use of the

mark, but it would not form the basis of a refusal under Section 2(d).

The wording “other insignia” found in Section 2(b) has not been interpreted

broadly, but is considered to include only those emblems and devices that also

represent such authority as, and that are of the same general class and character as,

flags and coats of arms of the United States, of states or municipalities, or of foreign

nations. See In re U.S. Dept. of the Interior, 142 USPQ 506, 507 (TTAB 1964) (“Since

both the flag and coat of arms are emblems of national authority it seems evident

that other insignia of national authority such as the Great Seal of the United States,

the Presidential Seal, and seals of government departments would be equally

prohibited registration under Section 2(b).”).

Based on its long association with the heir apparent to the British throne, dating

back to the fourteenth century, and its designation by the Government of the United

Kingdom as the official emblem of the Prince of Wales, we find that the Prince of

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Serial No. 85135970

Wales’ emblem is an “insignia of national authority” on par with a coat of arms as

found in Section 2(b). Id. Accordingly, we find that the Prince of Wales’ emblem as

depicted in Serial No. 89001177 is an insignia of a foreign nation.

B. Whether Applicant’s mark consists of, comprises, or is a simulation of the

Prince of Wales’ emblem

Because there are differences between Applicant’s mark and the Prince of Wales’

emblem, we find Applicant’s mark does not “consist[ ] of or comprise[ ]” the emblem.

Instead, we consider whether Applicant’s mark is a “simulation” of the emblem.

Regarding the meaning of the term “simulation,” as used in Section 2(b), the Board

has stated:

In determining this issue, it is our opinion that the term

“simulation” is used in the context of Section 2(b) of the

Statute 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.

(Webster’s Third New International Dictionary,

Unabridged Edition, 1965). Whether or not a simulation

exists in a proceeding of this character 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 emblem].

Focus must be on general recollection of the [emblem] by

purchasers, and a comparison of it with applicant’s mark.

In re Advance Indus. Sec., Inc., 194 USPQ 344, 346 (TTAB 1977). Conversely, 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 Section 2(b).

See In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973) (“[A]lthough the flags

depicted in applicant’s mark incorporate common elements of flag designs such as

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Serial No. 85135970

horizontal or vertical lines, crosses or stars, they are readily distinguishable from any

of the flags of the nations alluded to by the examiner.”).

The Prince of Wales’ emblem is described in greater detail on the Prince’s website

as comprising “three silver (or white) feathers rising through a gold coronet11 of

alternate crosses and fleur-de-lys [sic]. The motto ‘Ich Dien’ (I serve) is on a dark blue

ribbon beneath the coronet.”12 Notably, some variation in the representation of the

emblem appears to be permitted:

The rules of heraldry allow limited variations in the

depiction of the badge. The spines or quills of the feathers

can be of gold, instead of white or silver, and the coronet -

usually studded with emeralds and rubies, can also feature

small sapphires.

The arrangement of the motto ribbon can vary, but is

usually shown in front of the two outer feathers and behind

the centre one.13

When we compare Applicant’s mark with the emblem as shown above, we note

several differences. The most obvious difference is that the banner and wording “Ich

Dien” are absent from Applicant’s mark which, in contrast, has the initials SC on the

front of the crown. In addition, the quill ends of the feathers are not visible below the

crown in Applicant’s mark as they are in the Prince of Wales’ emblem; the crowns are

of slightly different designs; and the feathers too are arranged slightly differently.

Nevertheless, when we compare overall commercial impression, we find that the

11 A coronet is “a small or lesser crown usually signifying a rank below that of a sovereign.”

Https://www.merriam-webster.com/dictionary/coronet.

12 Http://www.royal.gov.uk/ThecurrentRoyalFamily/ThePrinceofWales/Emblems.aspx,

Office Action of February 13, 2015, TSDR p. 4.

13 Id.

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Serial No. 85135970

similarities outweigh these differences. Applicant’s mark features two of the most

dominant elements of the Prince of Wales’ emblem: the crown and three feathers

design. Applicant’s mark is more than a combination of “common elements” that

might be found in heraldry. See Waltham Watch Co., 179 USPQ at 60 (Incorporation

of common elements of flag designs insufficient to depict simulation of flags of

Switzerland and Great Britain). That is, both Applicant’s mark and the Prince of

Wales’ emblem create the same overall impression, that of a heraldic crown with

three large feathers extending up from the crown. In addition, given the fact that

some variation in the representation of the Prince of Wales’ emblem is permitted, it

is possible that consumers viewing Applicant’s mark would ascribe any differences

between Applicant’s mark and the emblem to such permitted variation. Accordingly,

we find that Applicant’s mark is a “simulation” of an insignia of a foreign nation

because it “gives the appearance or effect or has the characteristics of the original

item,” namely, the Prince of Wales’ emblem. See Advance Indus. Sec., 194 USPQ at

346.

Applicant, relying on Advance Industrial Security, nevertheless argues that

consumers are unlikely to believe that Applicant’s mark has any association or

connection with the Prince of Wales:

[C]onsumers will understand that Applicant’s SC & Crown

Design mark is a design associated with Applicant’s

famous SHABBY CHIC mark. . . . Applicant’s crown and

feather design resembles a house brand, rather than the

Prince of Wales Emblem or any other official governmental

insignia. The overall commercial impression conveyed by

Applicant’s mark is not that of a trademark owner trying

to convince a viewer of a false association with a

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Serial No. 85135970

government, a governmental entity, or other official

designation.14

Advance Industrial Security does not compel a different outcome. In that case, the

Board found the mark ADVANCE SECURITY with an eagle design, below left, was

not a simulation of the Coat of Arms of the United States, below right, so as to bar

registration under Section 2(b).

In comparing these marks, the Board found that the overall commercial impression

of the applied-for mark differed from the Coat of Arms:

[T]he mark proposed for registration is not merely an eagle

and shield design with its distinct differentiations from the

Coat of Arms, but it is in fact a triangular shield design in

gold and brown with the words “ADVANCE SECURITY”

predominately displayed in the upper central portion of the

mark which creates an overall commercial impression

distinctly different from the Coat of Arms per se.

Id. at 346. Here, we find the differences between Applicant’s mark and the Prince of

Wales’ emblem are minor, and the similarities outweigh those differences to convey

a similar overall commercial impression.

14 Applicant’s Br., p. 8-9, 15 TTABVUE 11-12.

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Serial No. 85135970

Moreover, the record establishes that the Prince of Wales has the right to control

the use of the emblem: “The Prince is also one of three members of the Royal Family

able to grant Royal Warrants of appointment to companies. The company is then

entitled to display The Prince of Wales’s Feathers on their products.”15 It is possible

that consumers, upon viewing Applicant’s mark on the identified goods, may believe

that Applicant has been granted such a Royal Warrant signifying that its products

are associated with or approved by the Prince of Wales.

Applicant argues that its ownership of two cancelled registrations, for a nearly

identical mark and a mark incorporating Applicant’s crown design, establishes that

it is “illogical to deny registration of Applicant’s SC & Design mark given the Office’s

prior approval of the same or substantially indistinguishable design in Applicant’s

prior registrations.”16 This argument is unpersuasive. The existence of prior

registrations does not overcome evidence that a mark is now unregistrable. It is well

settled that we must assess each application on its own record at the time registration

is sought, and that we are not bound by the decisions of Examining Attorneys in other

cases. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir.

2016) (“The PTO is required to examine all trademark applications for compliance

with each and every eligibility requirement . . . even if the PTO earlier mistakenly

registered a similar or identical mark suffering the same defect.”); see also In re Nett

Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“[D]ecisions

15 Http://www.princeofwales.gov.uk/the-prince-of-wales/titles-and-heraldry, Office Action of

February 13, 2015, TSDR p. 2.

16 Applicant’s Br., p. 11, 15 TTABVUE 14.

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regarding other registrations do not bind either the agency or this court.”); In re

Boulevard Entm’t Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (“The

fact that, whether because of administrative error or otherwise, some marks have

been registered even though they may be in violation of the governing statutory

standard does not mean that the agency must forgo applying that standard in all

other cases.”).17

In arguing that it is illogical to refuse registration in light of Applicant’s prior

registration of similar marks, Applicant also points to the Trademark Examining

Operation’s Consistency Initiative. The Consistency Initiative is a program developed

to aid in the consistent examination of trademark applications as compared to co-

pending applications and recent registrations.18 The program began as a pilot and

was eventually made permanent.19 Under the program,

Applicants may submit a Request [for Consistency Review]

when a substantive or procedural issue has been addressed

in a significantly different manner in different cases,

subject to the following provisions:

(1) the Request is based on co-pending applications or an

application and a registration owned by the same legal

entity or a successor in interest (e.g., assignee);

17 In addition, the record here reflects that the evidence available to the Examining Attorney

to establish the refusal under Section 2(b) with respect to the Prince of Wales’ emblem in this

application is different from that which was available when the marks in the prior

registrations were examined in 2003. In particular, a search of the USPTO’s database then

would not have returned the Prince of Wales’ emblem claimed as a state emblem of the United

Kingdom in Serial No. 89001177 because it was filed in 2005.

18 Http://www.uspto.gov/web/trademarks/notices/Consistency_Notice_Final.doc, September

29, 2008.

19 Https://www.uspto.gov/trademark/trademark-updates-and-announcements/consistency-

initiative, December 4, 2012.

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Serial No. 85135970

(2) the registration(s) involved was issued less than five

years prior to the date of the Request;

(3) at least one of the applications in the Request is in a

pre-publication status at the time of the Request; and

(4) the allegedly inconsistent treatment has already

occurred.20

Applicant states that “[t]he present situation is exactly the type of situation the

Consistency Initiative is intended to address, namely, Applicant’s prior registrations

for the same mark for the same goods dictate registration of the present

application.”21

Applicant’s reliance on the Consistency Initiative is misplaced for a number of

reasons. First, even if the Board were the proper forum in which to complain about

treatment of the involved application under the Initiative, Applicant has not

indicated that it actually submitted a Request for Consistency Review as required by

the program. Second, Applicant’s prior registrations are not encompassed by the

program inasmuch as they have been cancelled and also were issued more than five

years prior to the examination of Applicant’s mark in the present application. Third,

the Office specifically retains the right to determine what constitutes the proper

examination of a given case, regardless of the nature of the request, and has

explained: “Requesters should note, however, that subsequent action taken by the

Office may differ from that requested. Alternatively, the Office may determine that

20 Id.

21 Applicant’s Br., p. 12, 15 TTABVUE 15.

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different handling of the cases is appropriate, and no action will be taken.”22 Thus, it

is not clear that the Section 2(b) refusal would have been withdrawn had Applicant

filed a Request. Lastly, the Consistency Initiative is a program developed to aid the

examination by the Trademark Examining Group and decisions made under the

Initiative are not binding on the Board. Although we recognize that “consistency is

highly desirable,” In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir.

2007), consistency in examination is not itself a substantive rule of trademark law,

and a desire for consistency cannot overcome the requirements of the statute. See

Cordua, 118 USPQ2d at 1635. For these reasons, we find that the Consistency

Initiative does not dictate registration of the present application.

Applicant further argues that it is entitled to registration because the USPTO has

registered hundreds of “other ‘royal’ looking [crown] designs” and “more than one

thousand marks incorporating the fleur-de-lis design.”23 We disagree. None of the

numerous third-party marks Applicant made of record combine both a crown and

feathers to the same degree of similarity with the Prince of Wales’ emblem as does

Applicant’s mark. Applicant’s argument that its mark has co-existed with the Prince

of Wales’ emblem for 13 years without confusion or objection from the Prince of Wales

is equally unpersuasive.24 Section 2(b) is an absolute bar to registration, thus,

absence of confusion is irrelevant and a lack of objection from the Prince of Wales

22 Https://www.uspto.gov/trademark/trademark-updates-and-announcements/consistency-

initiative, December 4, 2012.

23 Applicant’s Br., p. 12, 15 TTABVUE 15.

24 Applicant’s Reply Br., p. 8, 18 TTABVUE 8.

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plays no part. See In re District of Columbia, 101 USPQ2d at 1598 (“[R]ather than

simply being a special case of confusion, registration of governmental insignia is

prohibited by Trademark Act § 2(b) regardless of whether confusion would result.”).

In sum, the record in this case convinces us that Applicant’s mark is a simulation

of an insignia of a foreign nation; the bar against its registration is absolute under

the Trademark Act; and Applicant’s invocation of the Trademark Examining Group’s

Consistency Initiative before the Board is procedurally improper.

Decision: The refusal to register Applicant’s mark under Section 2(b) of the

Trademark Act is affirmed.

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