Trademarks > Examination Guide 1-07

Examination Guide 1-07
EXAMINATION PROCEDURES FOR MARKS COMPRISING A RED
CRYSTAL OR RED CRESCENT ON A WHITE BACKGROUND; OR THE
PHRASES "RED CRESCENT" OR "THIRD PROTOCOL EMBLEM"
Issued June 25, 2007

I. INTRODUCTION

II. First use after December 8, 2005

III. First use on or before December 8, 2005 – Grandfather clause

IV. Date of first use not specified

V. NATURE OF THE MARK

VI. AMENDMENTS TO DISCLAIM, DELETE, or amend THE UNREGISTRABLE SYMBOL OR DESIGNATION

VII. Parties authorized to use the Red Crescent and Third Protocol Emblem

APPENDIX A

APPENDIX B

APPENDIX C

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I. INTRODUCTION

This examination guide addresses the registrability of applications that contain the Red Crescent symbol, the Third Protocol Emblem, or the designations "Red Crescent" and "Third Protocol Emblem."

On December 8, 2005 the United States signed the Third Protocol Additional to the 1949 Geneva Conventions relating to the Adoption of an Additional Distinctive Emblem (the "Protocol"). The Protocol creates two new distinctive emblems: (1) the Third Protocol Emblem, composed of a red diamond on a white background (shown below); and (2) the Red Crescent, composed of a red crescent on a white background (shown below).

On January 12, 2007, the President signed Public Law 109-481 that, inter alia, creates a new criminal statutory provision, 18 U.S.C. §706a, to prohibit the use of the distinctive emblems, the Red Crystal and the Red Crescent, or any imitation thereof, as well as the designations "Third Protocol Emblem" and "Red Crescent," 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 such emblem, sign, insignia or words that 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. The provisions of 18 U.S.C. §706a closely mirror the existing provision in 18 U.S.C. §706 for the American National Red Cross.¹

II. FIRST USE AFTER DECEMBER 8, 2005

If a party other than an authorized party (see Section VI for definition of authorized party) applies to register the Red Crescent, the Third Protocol Emblem, or the designations "Red Crescent" or "Third Protocol Emblem," and claims a date of first use in commerce after December 8, 2005, the examining attorney must refuse registration under §2(a), 15 U.S.C. §1052(a), on the ground that the mark comprises matter that may falsely suggest a connection with the International Federation of Red Cross and Red Crescent Societies and/or other authorized parties under the statute. See 18 U.S.C. 706a; TMEP §1203.03(e). The examining attorney must provide appropriate supporting evidence for the refusal. In addition, a refusal must also be made 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.

When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§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 (or, in the case of services, §§1, 2, 3 and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053 and 1127), as appropriate. See TMEP §§1204 and 1202.

III. FIRST USE ON OR BEFORE DECEMBER 8, 2005 – GRANDFATHER CLAUSE

As set forth above, registration need not be refused where, in an application under §1 of the Trademark Act, 15 U.S.C. §1051, the applicant claims a date of first use in commerce on or before December 8, 2005, if the goods and services would not appear in time of armed conflict to confer the protections of the Geneva Conventions. However, registration should be refused under §2(a) and §§1 and 45 of the Trademark Act if the goods or services are of a type typically offered as emergency relief or assistance in times of armed conflict. Such services may include, but are not limited to, medical assistance, religious, and charitable services. For example, applications for clothing, food items, or first aid services must be refused under §2(a) and §§1 and 45 of the Trademark Act. The refusals can be withdrawn if the applicant amends the identification to indicate that the goods/services are not offered as emergency relief or assistance in time of armed conflict.

When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§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 (or, in the case of services, §§1, 2, 3 and 45 of the Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127), as appropriate. See TMEP §§ 1204 and 1202.

IV. DATE OF FIRST USE NOT SPECIFIED

For applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume the date of first use in commerce is or will be after December 8, 2005 unless the application record indicates otherwise.

A refusal of registration because the mark is not in lawful use in commerce cannot be issued unless the applicant files an allegation of use. However, a refusal under §2(a), and any other applicable refusals discovered in the normal course of examination, should be issued during initial examination.

V. NATURE OF THE MARK

Design elements

The statute prohibiting use of the Red Crystal and Red Crescent symbols by unauthorized parties applies to "any sign or insignia made or colored in imitation thereof." If the mark includes a design element where the color red is claimed, and the design would be likely to be perceived as the Red Crystal symbol or the Red Crescent symbol, the examining attorney must refuse registration under §2(a) and, if applicable (see Sections II and III above), under §§1 and 45.

A mark that includes a design element will generally be considered registrable, and will not be refused under §2(a), if the applicant does not claim color as a feature of the mark. In such cases, a statement that the mark is not used in the color red is unnecessary, and if submitted, should not be printed on the registration certificate.² Registration will be refused, however, if the applicant does not claim color as a feature of the mark, but the specimen of use shows use of the mark in the color red. In such cases, the examining attorney must refuse registration under §§1 and 45 because the mark is not in lawful use in commerce. The refusal will be withdrawn if the applicant submits a proper substitute specimen showing use of the mark in a color other than red. A photocopy of the original specimen is not an acceptable substitute specimen.

Word elements

Regarding the phrases "Red Crescent" and "Third Protocol Emblem," the statute prohibiting use of these designations does not apply to variations or modifications of these words. Only marks that include the exact wording RED CRESCENT or THIRD PROTOCOL EMBLEM, with or without additional wording, must be refused under §2(a) and §§1 and 45.

For example, REDCRESCENTS would not be refused registration, but RED CRESCENT DONOR could be refused registration if the date of first use is after December 8, 2005, or the application otherwise fails to qualify for the grandfather clause described in Section III.

VI. AMENDMENTS TO DISCLAIM, DELETE, OR AMEND THE UNREGISTRABLE SYMBOL OR DESIGNATION

If the mark is unregistrable because it includes the Red Crescent or Third Protocol symbols or words, a disclaimer of the unregistrable matter will not render the mark registrable. Similarly, disclaimer of the color red is inappropriate, and will not obviate a refusal of registration.

On the other hand, if the unregistrable symbol or designation is deleted from the mark sought to be registered, the examining attorney should withdraw the refusals that are based on the unregistrable symbol or designation, and, if necessary, refuse registration because the amendment to the mark is material. Deletions of matter determined to be unregistrable under §2(a) of the Act are sometimes permissible. See TMEP §807.14(a).

The examining attorney may also permit an amendment from a color drawing to a black-and-white drawing, to eliminate the claim of the color red, if such an amendment would not otherwise constitute a material alteration of the mark. See Examination Guide 05-06.

VII. PARTIES AUTHORIZED TO USE THE RED CRESCENT AND THIRD PROTOCOL EMBLEM

Under 18 U.S.C. 706a, the following parties are authorized to use the Red Crescent symbol and the Third Protocol Emblem on a white background and the designations "Red Crescent" and "Third Protocol Emblem:"

1. authorized national societies that are members of the International Federation of Red Cross and Red Crescent Societies and their duly authorized employees and agents;
2. the International Committee of the Red Cross and its duly authorized employees and agents;
3. the International Federation of Red Cross and Red Crescent Societies and its duly authorized employees and agents; and
4. the sanitary and hospital authorities of the armed forces of State Parties to the Geneva Conventions of August 12, 1949.

If the applicant is not clearly authorized to use an emblem or designation, the examining attorney must refuse registration. The refusal may be withdrawn if the applicant or the applicant’s attorney submits a statement that the applicant is an authorized party, and indicates the reason why the applicant is authorized (e.g., applicant is an authorized agent of the International Federal of Red Cross and Red Crescent Societies).

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APPENDIX A: PROCEDURE IF THE APPLICANT IS NOT AN AUTHORIZED PARTY ³
AND THE MARK INCLUDES ANY OF THE FOLLOWING SYMBOLS OR DESIGNATIONS

or used on a white background, or imitations of such designations 4

THIRD PROTOCOL EMBLEM or RED CRESCENT or these exact words used as part of a mark

 

Use dates	Goods or services	Procedure regarding §2(a) and §§1 and 45 refusals
No use	All goods or services	§2(a) refusal: false suggestion of a connection with the International Federation of Red Cross and Red Crescent Societies or other authorized parties
Use after December 8, 2005	All goods or services	§2(a) refusal: false suggestion of a connection with the International Federation of Red Cross and Red Crescent Societies or other authorized parties §§1 and 45 refusal: mark is not in lawful use in commerce
Use on or before December 8, 2005	Goods or services for emergency relief or assistance in times of armed conflict (e.g., medical, religious, or charitable goods or services such as food, clothing, or shelter)	§2(a) refusal: false suggestion of a connection with the International Federation of Red Cross and Red Crescent Societies or other authorized parties §§1 and 45 refusal: mark is not in lawful use in commerce Refusals can be withdrawn if ID is amended to state that goods/services are not for emergency relief or assistance in times of armed conflict
Use on or before December 8, 2005	All other goods or services	Grandfather clause applies. Do not issue §2(a) false suggestion and §§1 and 45 not-in-lawful-use refusals.

 

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APPENDIX B: PROCEDURE IF THE APPLICANT IS NOT AN
AUTHORIZED PARTY ⁵ AND THE MARK INCLUDES ANY OF THE
FOLLOWING SYMBOLS OR DESIGNATIONS

used on a white background, or any imitation of such designation 6

RED CROSS or GENEVA CROSS or any combination of these words

 

Use dates	Goods or services	Procedure regarding §2(a) and §§1 and 45 refusals
No use	All goods or services	§2(a) refusal: false suggestion of a connection with the American National Red Cross
Use after June 25, 1948	All goods or services	§2(a) refusal: false suggestion of a connection with the American National Red Cross §§1 and 45 refusal: mark is not in lawful use in commerce
Use on or before June 25, 1948	All goods or services	Grandfather clause applies. Do not issue §2(a) false suggestion and §§1 and 45 not-in-lawful-use refusals.

 

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APPENDIX C
18 USC §§ 706 and 706a

§ 706. Red Cross

Whoever wears or displays the sign of the Red Cross or any insignia colored in imitation thereof for the fraudulent purpose of inducing the belief that he is a member of or an agent for the American National Red Cross; or

Whoever, whether a corporation, association or person, other than the American National Red Cross and its duly authorized employees and agents and the sanitary and hospital authorities of the armed forces of the United States, uses the emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof or the words "Red Cross" or "Geneva Cross" or any combination of these words-

Shall be fined under this title or imprisoned not more than six months, or both.

This section shall not make unlawful the use of any such emblem, sign, insignia or words which was lawful on the date of enactment of this title [enacted June 25, 1948].

§ 706a. Geneva distinctive emblems

1. Whoever wears or displays the sign of the Red Crescent or the Third Protocol Emblem (the Red Crystal), or any insignia colored in imitation thereof for the fraudulent purpose of inducing the belief that he is a member of or an agent for an authorized national society using the Red Crescent or the Third Protocol Emblem, the International Committee of the Red Cross, or the International Federation of Red Cross and Red Crescent Societies shall be fined under this title or imprisoned not more than 6 months, or both.
2. Except as set forth in section "c" and "d", whoever, whether a corporation, association, or person, uses the emblem of the Red Crescent or the Third Protocol Emblem on a white ground or any sign or insignia made or colored in imitation thereof or the designations "Red Crescent" or "Third Protocol Emblem" shall be fined under this title or imprisoned not more than 6 months, or both.
3. The following may use such emblems and designations consistent with the Geneva Conventions of August 12, 1949, and, if applicable, the Additional Protocols:
   1. Authorized national societies that are members of the International Federation of Red Cross and Red Crescent Societies and their duly authorized employees and agents.
   2. The International Committee of the Red Cross and its duly authorized employees and agents.
   3. The International Federation of Red Cross and Red Crescent Societies and its duly authorized employees and agents.
   4. The sanitary and hospital authorities of the armed forces of State Parties to the Geneva Conventions of August 12, 1949.
4. This section does not make unlawful the use of any such emblem, sign, insignia, or words which was lawful on or before December 8, 2005, if such use would not appear in time of armed conflict to confer the protections of the Geneva Conventions of August 12, 1949, and, if applicable, the Additional Protocols.
5. A violation of this section or section 706 [18 USC § 706] may be enjoined at the civil suit of the Attorney General.

¹ See Appendix B regarding examination of marks that include the Red Cross symbol or the words RED CROSS or GENEVA CROSS.

² The presumption that a registration without a color claim permits use of the mark in any color, see, e.g., In re Data Packaging Corp ., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (CCPA 1972), is overcome by a federal law that prohibits use of the mark in the color red.

³ Authorized parties:

1. Authorized national societies that are members of the International Federation of Red Cross and Red Crescent Societies and their duly authorized employees and agents.
2. The International Committee of the Red Cross and its duly authorized employees and agents.
3. The International Federation of Red Cross and Red Crescent Societies and its duly authorized employees and agents.
4. The sanitary and hospital authorities of the armed forces of State Parties to the Geneva Conventions of August 12, 1949.

A statement by the applicant, or the applicant’s attorney, that the applicant is authorized, along with an explanation of the reason why the applicant is authorized, is sufficient to show authorization.

⁴ A mark that includes a design element will generally be considered registrable if the applicant does not claim the color red as a feature of the mark. A statement that the mark is not used in the color red is unnecessary, and if submitted, should not be printed on the registration certificate. However, if color is not claimed, but the specimen shows the design used in the color red, registration must be refused under §§1 and 45 because the mark is not in lawful use in commerce.

⁵Authorized parties:

1. American National Red Cross and its duly authorized employees and agents.
2. Sanitary and hospital authorities of the armed forces of the United States.

A statement by the applicant, or the applicant’s attorney, that the applicant is authorized, along with an explanation of the reason why the applicant is authorized, is sufficient to show authorization.

⁶ A mark that includes a design element will generally be considered registrable if the applicant does not claim the color red as a feature of the mark. A statement that the mark is not used in the color red is unnecessary, and if submitted, should not be printed on the registration certificate. However, if color is not claimed, but the specimen shows the design used in the color red, registration must be refused under §§1 and 45 because the mark is not in lawful use in commerce.

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