I never paid a lot of attention to Flag Day, until the year that my daughter was born on June 14. Now Flag Day is a special day for our family, and of course there is a lot of flag waving on Independence Day which comes hot on its heels. So this seems like a good time to review the rules on when you can register and use images of flags as trademarks.
Rules Regarding Federal Registration of Trademarks
The rules regarding the registration of flags are straightforward, but their application is not. To begin with, Section 2(b) of the Lanham Act (codified at 15 U.S.C. Sec. 1052(b)(2)) provides:
No trademark … shall be refused registration … 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 …
Thus, the USPTO must refuse registration to any mark that includes a flag or a simulation of a flag regardless of whether any confusion is likely. By comparison, Section 2(a) bars registration of marks that falsely suggest a connection with institutions or national symbols. As a practical matter, it is easier for the USPTO to issue a rejection on the basis of Section 2(b) because no confusion or association must be shown, so that part of the statute tends to drive refusals to register marks that include elements of flags.
Practical Tips for Registering Trademarks that Include Elements of Flags
The USPTO has put out detailed guidance on refusals of registration on the basis of flags in Trademark Manual of Examining Procedure (TMEP), Sec. 1204. “A refusal must be issued if the design would be perceived by the public as a flag, regardless of whether other matter appears with or on the flag.” On the other hand, the use of “individual or distorted features that are merely suggestive of flags” will not pose a bar to registration.
This line can be hard to draw. TMEP provides the following examples of marks that it considers to be registrable and not registrable:
Are these results intuitive to you? Here are some of the factors that guide the USPTO’s analysis:
- If all of the elements of a flag are present, and the image is a reasonably accurate depiction of the flag in question (even if it is a cartoon or other “simulation”), registration will be refused.
- Where all of the elements of a flag are present and accurately depicted, the presence of additional material – such as the words SCHENCK FUELS SERVICES and the guitar image in the examples above – will not help. This is because a mark will be refused if it “consists of or comprises” a flag, and the Trademark Trial and Appeal Board has made clear that “comprises” means “includes.”
- Adding wording or images that reinforce the “flagginess” of the image – such as the name of the state or country or images that are commonly associated with those places – increase the chances of a rejection.
- If only some elements of a flag are used, the mark may be registrable, particularly where a partial flag design is being used to fill in a shape, or if the flag imagery is largely obscured by words or other design elements that are not reinforcing a “flaggy” commercial impression.
- Made up flags are okay, and will not be refused registration. Altering existing flags by substituting colors or changing the position of the constituent parts fall into this category.
- Flags that are no longer used, such as the original United States flag representing the 13 colonies or the flag of Yugoslavia, will not serve as the basis for a rejection.
More Traps for the Unwary
There are special statutes prohibiting the use of marks that resemble the Swiss flag (white cross on a red square), the Swiss coat of arms (white cross on a red triangular shield), the mark of the International Red Cross (red cross on a white background), and the image of the Red Crystal or Red Crescent against a white background. These provisions may independently bar registration.
Use of Flags as Trademarks and in Advertising
And now we enter the Twilight Zone of laws that are on the books but are seldom if ever enforced. The federal government, and the governments of many states such as New York and Massachusetts, have enacted laws that prohibit various types of conduct that is considered disrespectful to the American flag. For example, 4 U.S.C. Sec. 8 provides that, “The flag should never be used for advertising purposes in any manner whatsoever” and “no part of the flag should ever be used as a costume or athletic uniform.” In case you were wondering, the flag also “should never be used as a covering for a ceiling.”
Regardless of how these types of prohibitions were viewed during World War II, when the above provisions were signed into law by President Roosevelt, one only needs to drive past an auto dealership on President’s Day weekend to appreciate how out of step these laws are with the reality of modern American commerce. If these laws were enforced today, they would almost certainly be challenged on Constitutional grounds, and as a practical matter they are largely ignored along with other laws prohibiting things like allowing your donkey to sleep in a bathtub.
While I am sure that no company wants to be the test case on the application of the anti-flag advertising laws, there would appear to be little likelihood of enforcement in the absence of unusual circumstances such as desecration of a flag or some other controversial aspect of the advertising in question. In short, I am not aware that reputable advertisers are losing sleep over this issue.
Happy Flag Day!