Statutory Protection

Various federal statutes and regulations prohibit or

restrict the use of certain words, names, symbols, terms, initials, marks, emblems,

seals, insignia, badges, decorations, and medals adopted by the United States

government, including any agency or instrumentality thereof, or particular national

and international organizations. These designations are reserved for the specific

purposes prescribed in the relevant statute and must be free for use in the

prescribed manner. See

Appendix C

for a nonexhaustive list of United States statutes protecting designations of

certain government agencies and instrumentalities.

For example, Congress has created statutes that grant

exclusive rights to use certain designations to federally created private

corporations and organizations. Violation of some of these statutes may be a

criminal offense,

e.g.

, 18 U.S.C. §705  (regarding badges,

medals, emblems, or other insignia of veterans’ organizations). Other statutes

provide for civil enforcement,

e.g.

, 36 U.S.C. §§153104

(National Society of the Daughters of the American Revolution); 30905 (Boy Scouts);

80305 (Girl Scouts); 130506 (Little League); and 21904 (The American National

Theater and Academy).

"89" Series or

Non-Registrations

If the USPTO is made aware of a federal statute or

regulation that prohibits or restricts the use of certain words, names, symbols,

terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and

characters, they are entered into the USPTO search records to assist USPTO examining

attorneys. These designations are assigned a serial number in the "89" series code

(i.e., serial numbers beginning with the digits "89," sometimes referred to as

"non-registrations"). Information about the statutory restriction should be

discovered in an examining attorney’s search and a copy of the statutory language

may be in the search record.

In certain circumstances the USPTO may remove a

non-registration record from its search records, such as when a statutory

restriction has been repealed

bers beginning with the digits "89," sometimes referred to as

"non-registrations"). Information about the statutory restriction should be

discovered in an examining attorney’s search and a copy of the statutory language

may be in the search record.

In certain circumstances the USPTO may remove a

non-registration record from its search records, such as when a statutory

restriction has been repealed. Removal of a non-registration record does not mean a

refusal is not warranted under the Trademark Act. For example, it may still be

appropriate for the examining attorney to refuse registration of a mark consisting

of formerly statutorily protected matter under §2(a) on the ground that the mark

comprises matter that may falsely suggest a connection with a person, institution,

belief, or national symbol (

see

TMEP §§1203.03(b)

–

1203.03(b)(iii)

) or under §2(b) for matter that

comprises a flag, coat of arms, or other similar insignia (

see

TMEP §1204

).

Examples of Statutorily Protected

Matter

The following are examples of the protection of words

and symbols by statute:

(1) The Copyright Act of 1976 includes provisions

regarding the use of appropriate notices of copyright. 17 U.S.C.

§§101-1332.  These include provisions concerning the use of the letter "C"

in a circle – ©, the word "Copyright" and the abbreviation "Copr." to

identify visually perceptible copies (17 U.S.C. §401);  the use of the

letter "P" in a circle to indicate phonorecords of sound recordings (17

U.S.C. §402);  and the use of the words "mask work," the symbol *M* and the

letter "M" in a circle to designate mask works (17 U.S.C. §909).  The

Copyright Act designates these symbols to indicate that the user of the

symbol is asserting specific statutory rights.

y visually perceptible copies (17 U.S.C. §401);  the use of the

letter "P" in a circle to indicate phonorecords of sound recordings (17

U.S.C. §402);  and the use of the words "mask work," the symbol *M* and the

letter "M" in a circle to designate mask works (17 U.S.C. §909).  The

Copyright Act designates these symbols to indicate that the user of the

symbol is asserting specific statutory rights.

(2) Red Cross Emblem or the designations "Red

Cross" and "Geneva Cross": Under 18 U.S.C. §706, the use of the Red Cross

emblem as well as the designations "Red Cross" and "Geneva Cross," or any

imitation thereof, is prohibited except by the American National Red Cross,

and by sanitary and hospital authorities of the armed forces of the United

States. The statute carves out an exception for use of any such emblem,

sign, insignia, or words that were lawfully used on or before June 25, 1948.

See In re Health Maint.

Orgs., Inc.

, 188 USPQ

473 (TTAB1975) (holding mark comprising a dark cross with legs of equal

length on which a caduceus is symmetrically imposed (representation of

caduceus disclaimed) registrable, the Board finding the mark readily

distinguishable from the Greek red cross (on white background) and the Swiss

confederation coat of arms (white cross on red background)). See

TMEP

§§1205.01(c)–1205.01(c)(iv)

for further

information.

(3) False advertising or misuse of names to

indicate a federal agency is proscribed by 18 U.S.C. §709.  For example,

this provision prohibits knowing use, without written permission of the

Director of the Federal Bureau of Investigation, of the words "Federal

Bureau of Investigation," the initials "F.B.I." or any colorable imitation,

in various formats "in a manner reasonably calculated to convey the

impression that such advertisement, . . . publication, . . . broadcast,

telecast, or other production, is approved, endorsed, or authorized by the

Federal Bureau of Investigation." Thus, an examining attorney must refuse to

register such matter, pursuant to 18 U.S.C

Investigation," the initials "F.B.I." or any colorable imitation,

in various formats "in a manner reasonably calculated to convey the

impression that such advertisement, . . . publication, . . . broadcast,

telecast, or other production, is approved, endorsed, or authorized by the

Federal Bureau of Investigation." Thus, an examining attorney must refuse to

register such matter, pursuant to 18 U.S.C. §709,  if its use is reasonably

calculated to convey an approval, endorsement, or authorization by the

Federal Bureau of Investigation.

(4) Section 110 of the Amateur Sports Act of 1978,

36 U.S.C. §220506,  protects various designations associated with the

Olympics. The United States Supreme Court has held that the grant by

Congress to the United States Olympic Committee of the exclusive right to

use the word "Olympic" does not violate the First Amendment.

San

Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm.

,

483 U.S. 522, 3 USPQ2d 1145 (1987) (concerning petitioner’s use of "Gay

Olympic Games"). See

TMEP §§1205.01(b)–1205.01(b)(viii)

for

information about marks comprising Olympic matter.

(5) In chartering the Blinded Veterans

Association, Congress granted it the sole right to use its name and such

seals, emblems, and badges as it may lawfully adopt. 36 U.S.C. §30306.  This

protection of its exclusive right to use "Blinded Veterans Association" does

not extend to the term "blinded veterans," which has been found generic.

Blinded Veterans Ass’n v. Blinded Am. Veterans

Found.

, 872 F.2d 1035, 10 USPQ2d 1432 (D.C. Cir. 1989).

ociation, Congress granted it the sole right to use its name and such

seals, emblems, and badges as it may lawfully adopt. 36 U.S.C. §30306.  This

protection of its exclusive right to use "Blinded Veterans Association" does

not extend to the term "blinded veterans," which has been found generic.

Blinded Veterans Ass’n v. Blinded Am. Veterans

Found.

, 872 F.2d 1035, 10 USPQ2d 1432 (D.C. Cir. 1989).

(6)

Red Crescent Emblem, Third Protocol Emblem, or the designations

"Red Crescent" and "Third Protocol Emblem."

Under 18 U.S.C.

§706a,  the use of the distinctive emblems the Red Crystal and the Red

Crescent, as well as the designations "Third Protocol Emblem" and "Red

Crescent," or any imitation thereof, is prohibited, except by those

authorized to wear, display, or use them under the provisions of the Geneva

Conventions. The statute carves out an exception for use of any emblem,

sign, insignia, or words which were lawfully used on or before December 8,

2005, if use of these would not appear in time of armed conflict to confer

the protections of the Geneva Conventions of August 12, 1949. See

TMEP

§§1205.01(a)–1205.01(a)(vi)

for further

information.

Refusal of Marks Consisting of Statutorily

Protected Matter

Usually, the statute will define the appropriate use

of a designation and will prescribe criminal penalties or civil remedies for

improper use. However, the statutes themselves do not provide the basis for refusal

of trademark registration. To determine whether registration should be refused in a

particular application, the examining attorney should consult the relevant statute

to determine the function of the designation and its appropriate use. If a statute

provides that a specific party or government agency has the exclusive right to use a

designation, and a party other than that specified in the statute has applied to

register the designation, the examining attorney must refuse registration on the

ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the

Trademark Act,

15 U.S.C

designation and its appropriate use. If a statute

provides that a specific party or government agency has the exclusive right to use a

designation, and a party other than that specified in the statute has applied to

register the designation, the examining attorney must refuse registration on the

ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the

Trademark Act,

15 U.S.C. §§1051

and

1127

, in addition to the relevant statute.

See

TMEP §907

.

Depending on the nature and use of the mark, other

sections of the Trademark Act may also bar registration and must be cited where

appropriate. For example, it may be appropriate for the examining attorney to refuse

registration under §2(a) of the Trademark Act,

15 U.S.C.

§1052(a)

,  on the ground that the mark comprises matter that

may falsely suggest a connection with a person, institution, belief, or national

symbol specified in the statute (e.g., the United States Olympic Committee).

See

TMEP

§§1203.03(b)–1203.03(b)(iii)

. It may be appropriate to

refuse registration under §2(b),

15 U.S.C.

§1052(b)

, for matter that comprises a flag, coat of arms, or

other similar insignia.

See

TMEP §1204

. It

may be appropriate to refuse registration under §2(d),

15 U.S.C.

§1052(d)

,  if the party specified in the statute owns a

registration for a mark that is the same or similar.

In some instances, it may be appropriate for the

examining attorney to refuse registration pursuant to §§1, 2, and 45 of the

Trademark Act,

15 U.S.C. §§1051

,

1052

, and

1127

, on the ground that the subject matter would not be

perceived as a trademark. For service mark applications, §3 of the Act,

15 U.S.C. §1053

,  must also be cited as a

basis for refusal.

To determine what action is appropriate, the

examining attorney should look to the particular use of a symbol or term by the

applicant

ant to §§1, 2, and 45 of the

Trademark Act,

15 U.S.C. §§1051

,

1052

, and

1127

, on the ground that the subject matter would not be

perceived as a trademark. For service mark applications, §3 of the Act,

15 U.S.C. §1053

,  must also be cited as a

basis for refusal.

To determine what action is appropriate, the

examining attorney should look to the particular use of a symbol or term by the

applicant. For example, where it is evident that the applicant has merely included a

copyright symbol in the drawing of the mark inadvertently, and the symbol is not a

material portion of the mark, the examining attorney must indicate that the symbol

is not part of the mark and require that the applicant amend the drawing to remove

the symbol, instead of issuing statutory refusals of the types noted above.

Examining attorneys should also consider whether

registration of matter comprised in whole or in part of designations notified

pursuant to Article 6

ter

of the Paris Convention and entered into

the USPTO’s search records may be prohibited by §§2(a) and 2(b) of the Trademark

Act,

15 U.S.C. §§1052(a)

and

1052(b)

.

See

TMEP §1205.02

.