Trademark Act §2(b) prohibits registration on the Principal Register or Supplemental Register of a mark that consists of or comprises the flag or coat of arms of a foreign nation. 15 U.S.C. §1052(b); see TMEP §§1204-1204.05. In determining whether a mark must be refused under §2(b), the relevant question is whether consumers will perceive matter in the mark as a flag or coat of arms. See In re Family Emergency Room LLC, 121 USPQ2d 1886, 1888 (TTAB 2017); TMEP §1204.01(a).

Section 2(b) also prohibits registration of any simulation of a foreign nation’s flag or coat of arms. 15 U.S.C. §1052(b); see In re Family Emergency Room LLC, 121 USPQ2d at 1887; TMEP §1204.01(a). As previously noted, a "simulation" refers to "something that gives the appearance or effect or has the characteristics of an original item." In re Advance Indus. Sec., Inc., 194 USPQ 344, 346 (TTAB 1977); see TMEP §1204.

Whether particular matter is a simulation of a flag or coat of arms is determined by a visual comparison of the matter and the actual flag or coat or arms. See In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973); TMEP §1204. The focus of the analysis is on the relevant purchasers’ general recollection of the flag or coat of arms, "without a careful analysis and side-by-side comparison." In re Advance Indus. Sec., Inc., 194 USPQ at 346 . See TMEP §1204.01(a) for examples of flag simulations.

The examining attorney should consider the following factors when determining whether matter in a mark will be perceived as the Swiss coat of arms or Swiss flag:

1. the colors, if any, that appear in the matter;
2. the stylization of the matter and its relationship to other elements in the mark;
3. the presence of any words or other designs on the drawing that might create or reinforce the impression that the matter is the Swiss flag or Swiss coat of arms; and
4. the presentation and use of the mark on the specimen of record, if one is provided. See In re Family Emergency Room LLC, 121 USPQ2d at 1888; TMEP §1204.01(a).

The determination of whether a refusal under §2(b) must issue should be based on how the mark is displayed in the drawing, described in the application, or used in the specimen of record. See In re Family Emergency Room LLC, 121 USPQ2d at 1888. Extrinsic evidence of applicant’s use of the mark should not be considered.

The examining attorney must refuse registration under §2(b) if the mark contains an element composed of an upright equilateral cross on a square, a rectangle, or a triangular shield (or a simulation thereof) that is not significantly stylized, altered, or merged with other elements in the mark, and any of the following conditions exist:

1. the drawing shows the cross in white and the square, rectangle, or triangular shield in red;
2. the drawing is not in color, but (i) the color claim or mark description indicates the cross is white and the square, rectangle, or triangular shield is red, or (ii) the specimen shows the cross and square, rectangle, or triangular shield in the prohibited color scheme; or
3. the drawing is not in color, but in addition to an upright equilateral cross on a square, a rectangle, or a triangular shield, the mark contains wording or other matter that creates or reinforces the impression that the cross and square/rectangle/shield design is the Swiss flag or Swiss coat of arms (e.g., "Switzerland," "Swiss," "Suisse," "Schweiz," "Swiss Confederation").

For applications based on §1(a), the examining attorney must issue a requirement for additional information based on Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), if a mark contains an element composed of an upright equilateral cross on a square, a rectangle, or a triangular shield (or a simulation thereof) and all of the following conditions exist:

1. the drawing is not in color;
2. there is no color claim;
3. the mark description is omitted or does not reference color;
4. the mark does not contain wording or other matter that creates or reinforces the impression that the matter is the Swiss flag or Swiss coat of arms (e.g., "Switzerland," "Swiss," "Suisse," "Schweiz," "Swiss Confederation"); and
5. the specimen of record shows the mark but is not in color (i.e., the specimen is a black-and-white or gray scale reproduction of a color specimen).

The requirement for additional information should advise that registration of the Swiss coat of arms or Swiss flag in the white-and-red color scheme is barred under Trademark Act §2(b) and require the applicant to provide either a color version of the specimen of record or a statement that the relevant matter in the mark, as used in the specimen of record, does not appear in the colors white and red. If, in response, the applicant submits a color version of the specimen and it shows that the relevant matter is displayed in colors other than white and red, a refusal under §2(b) should not be issued. The statement that the relevant matter, as used in the specimen of record, does not appear in the prohibited color scheme may be submitted in a response to an Office action or may be entered by examiner’s amendment. If the applicant submits this statement, no further inquiry is necessary. Although the statement will appear in the application record, it will not be printed on the registration certificate, should one issue.

When issuing the §2(b) refusal, the examining attorney must provide evidence supporting the conclusion that the matter in the mark is the official coat of arms or flag of the Swiss Confederation. See Swiss Fed. Act of 21 June 2013 on the Protection of the Swiss Coat of Arms and Other Public Signs (Coat of Arms Protection, CAPA) https://www.fedlex.admin.ch/eli/cc/2015/613/en (accessed Feb. 1, 2024) (indicating that "[t]he Swiss cross is a white, upright, free-standing cross depicted against a red background, whose arms, which are all of equal size, are one-sixth longer than they are wide" and that "[t]he Coat of Arms of the Swiss Confederation (the Swiss coat of arms) is a Swiss cross in a triangular shield"); Britannica.com, flag of Switzerland, https://www.britannica.com/topic/flag-of-Switzerland (accessed Feb. 1, 2024); Cent. Intelligence Agency, The World Factbook, Switzerland, https://www.cia.gov/the-world-factbook/countries/switzerland/flag (accessed Feb. 1, 2024). In addition, if the refusal is based on the examining attorney’s conclusion that other wording or matter in the mark creates or reinforces the impression that the cross and square/rectangle/shield design is the Swiss flag or Swiss coat of arms, the examining attorney should provide evidence to support that conclusion.

If sending an Office action for other reasons, the examining attorney should provide an advisory regarding the potential refusal under §2(b) when all of the following conditions exist:

1. the mark contains an upright equilateral cross on a square, a rectangle, or a triangular shield that is not significantly stylized, altered, or merged with other elements in the mark;
2. the drawing is not in color;
3. the application record does not contain a specimen or any other indication of the colors that appear in the mark as it is actually used; and
4. there is no wording or other indicia in the mark that would create or reinforce the impression that the mark contains the Swiss flag or the Swiss coat of arms.

If possible, the examining attorney should provide the advisory in the initial Office action. The advisory should indicate that a refusal under Trademark Act §2(b) will issue if the specimen submitted with an allegation of use (for §1(b) applications) or a §8 or §71 affidavit or declaration of use (for §44 and §66(a) applications) shows the cross and square/rectangle/shield in a white and red color scheme. Failure to provide an advisory does not preclude a refusal of registration in a subsequent Office action or a refusal of a §8 or §71 affidavit or declaration. Cf. TMEP §1202.

Even if the mark contains an upright equilateral cross on a square, a rectangle, or a triangular shield (or simulation thereof), a §2(b) refusal should not be issued if any of the following conditions exist:

1. the flag or coat of arms shown in the mark is sufficiently altered, stylized, or merged with other elements in the mark, so as to create a distinct commercial impression;
2. the drawing is not in color, there is no color claim, the mark description does not reference color (or there is no mark description), and the application contains a color specimen that shows the relevant matter in a color scheme other than white and red; or
3. the drawing is in color and shows the cross and square/rectangle/shield in a color scheme other than white and red. In this situation, a refusal should not issue, even if the color claim, mark description, or specimen indicates that the cross and square/rectangle/shield appears in the prohibited color scheme. Instead, to address the discrepancy between the drawing and the other information in the application record, the examining attorney must require a corrected color claim, an amended mark description, and/or a matching specimen, as appropriate. In addition, the examining attorney should provide an advisory indicating that, under §2(b), the Swiss flag and Swiss coat of arms may not be registered as a trademark or service mark and that, if the applicant amends the drawing to show the cross in white and the square, rectangle, or shield in red, the mark will be refused under Trademark Act §2(b).

Section 2(b) provides an absolute bar to registration. See TMEP §1204.04(a). Thus, a disclaimer of the relevant matter will not overcome the refusal, nor will a claim of acquired distinctiveness under §2(f) or an amendment to the Supplemental Register. Id.

In addition, if registration is refused because the drawing or specimen actually shows the cross and square/rectangle/shield element in white and red, the applicant may not overcome the refusal by merely providing a statement that the mark will not be used in the prohibited colors. (If the drawing contains a black-and-white depiction of the Swiss flag or the Swiss coat of arms, and the applicant provides a statement that the mark does not, or will not, appear in the colors white and red, the statement will remain in the application record but will not be printed on any registration certificate that may issue.)

For applications based on §1, an applicant may overcome a §2(b) refusal as follows:

1. Amending the Colors in the Drawing. If registration is refused because the drawing shows the relevant matter in the prohibited color scheme, amending the drawing to show the matter in another color scheme—either in different colors or in no particular colors (i.e., black and white or gray scale)—will usually be sufficient to overcome the refusal. However, amending to a non-color drawing showing the mark in black and white or gray scale will not overcome the refusal if there is other matter in the mark (e.g., wording such as "Swiss" or "Switzerland") that creates or reinforces the impression that the cross and square/rectangle/shield design in the mark is the Swiss flag or the Swiss coat of arms.
2. Generally, amending the colors in the cross and square/rectangle/shield element in a mark to overcome a §2(b) refusal will not result in a material alteration of the mark. If the colors in the drawing are changed, the color claim and color description must also be amended or deleted, as appropriate. If the application is based on §1(a), the record must contain an acceptable matching specimen. Black-and-white or gray scale reproductions of specimens are not acceptable for this purpose; a color version of the specimen must be submitted.
3. Amending the Color Claim/Description; Substitute Specimen. If the drawing is not in color, but registration is refused because the color claim or mark description indicates that the relevant matter appears in white and red, a §1 applicant may overcome the refusal by amending the color claim or mark description to delete any reference to color. Likewise, if the original drawing is not in color, but registration was refused because the specimen showed the relevant matter in the prohibited color scheme, the applicant may obviate the refusal by submitting a color specimen showing use of the relevant matter in the mark in colors other than white and red.
4. Deleting the Coat of Arms or Flag from the Drawing. Section 1 applicants may also overcome a §2(b) refusal by deleting the unregistrable flag or coat of arms, but only if the matter is separable from other elements in the mark (e.g., the flag design is separated from, or is used as a background for, other matter in the mark) and the remaining matter is registrable. If the flag or coat or arms is deleted from the drawing, any specimen showing the mark with the deleted matter should still be considered to match the drawing. See TMEP §1204.04(b).
5. Amending the Filing Basis to §1(b). If registration of the mark is refused under §2(b) because the specimen of record shows the relevant matter in white and red, applicant may amend the application filing basis to §1(b), in which case the examining attorney should withdraw the refusal. However, the refusal must be reissued if the specimen submitted with applicant’s subsequent allegation of use shows the relevant matter in the prohibited color scheme.

For applications based on §44 or §66(a), applicants generally may not make amendments to the mark; thus, the option to delete the Swiss flag or Swiss coat of arms is not available. 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§ 807.12(b), 1011.01, 1904.02(j). However, if a §44 or §66(a) application presents the mark in color, but there is no corresponding color claim in the foreign or international registration, the applicant may submit a statement that no claim of color is made with respect to the foreign or international registration and amend the drawing to a black-and-white reproduction of the mark. See TMEP §§ 1011.01, 1904.02(k). In this manner, the applicant may overcome the §2(b) refusal, provided there are no other Swiss indicia in the mark that would create the perception that the black-and-white or gray-scale coat of arms or flag in the mark is the Swiss coat of arms or Swiss flag.