Certa ProPainters, Ltd.

Trademark Trial and Appeal Board

Nov 14, 2008

No. 77046679 (T.T.A.B. Nov. 14, 2008)

Mailed: 11/14/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Certa ProPainters, Ltd.
________

Serial No. 77046679
_______

Lane Fisher, F. Joseph Dunn and William R. Graefe of Fisher
Zucker for Certa ProPainters, Ltd.

Robert J. Struck, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Certa ProPainters, Ltd., a limited partnership
organized under the laws of Massachusetts, filed an
application to register the mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77046679
2
for “house painting; painting; painting in the field of
residential and commercial buildings.”1
The trademark examining attorney refused registration
under Section 2(b) of the Trademark Act, 15 U.S.C.
§1052(b), on the ground that applicant’s proposed mark
contains a simulation of a flag of a foreign nation,
specifically Canada, and/or displays the official national
insignia of Canada, namely the Canadian maple leaf.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Before turning to the merits of the appeal, we first
consider an evidentiary matter. Applicant’s brief makes
specific reference, for the first time during the
prosecution of its application, to several “non-simulative”
flag designs in third-party registered marks. More
specifically, applicant points out that the USPTO uses
“maple leaf” as a design code for searching trademarks, and
that there are 509 live registered marks containing a maple
leaf design. In its brief, applicant reproduced six of
these third-party registered marks, each showing use of an

1 Application Serial No. 77046679, filed November 17, 2006, based
on a bona fide intention to use the mark in commerce. The
application includes the following statements: “The mark
consists of a maple leaf with solid bar to the right of leaf and
the words BORN IN CANADA SPREADING ALL OVER THE WORLD. Color is
not claimed as a feature of the mark.”
Ser. No. 77046679
3
11-pointed maple leaf next to the word “Canada.” Applicant
also reproduced nine third-party registered marks, each
showing “clear imitations of the Canadian flag (and/or
other flags)” or “non-simulative” flags. (Brief, pp. 8-
10).
The examining attorney, in his brief, objected to this
evidence and the arguments based thereon on the ground that
the registrations were not properly made of record.
Firstly, the evidentiary record in an application
should be complete prior to the filing of an appeal.
Additional evidence filed after appeal normally will be
given no consideration. Trademark Rule 2.142(d); and TBMP
§1207.01 (2d ed. rev. 2004). Secondly, to make a third-
party registration of record, a copy of the registration,
either a copy of the paper USPTO record, or a copy taken
from the electronic records of the Office, should be
submitted. In re Volvo Cars of North America Inc., 46
USPQ2d 1455, 1456 n. 2 (TTAB 1998); and In re Duofold Inc.,
184 USPQ 638, 640 (TTAB 1974). Merely listing such
registrations and/or reproducing the registered marks, as
applicant has done here, is insufficient to make the
registrations of record. In re Dos Padres Inc., 49 USPQ2d
1860, 1861 n. 2 (TTAB 1998). See TMEP §710.03 (5th ed.
2007); and TBMP §1208.02 (2d ed. rev. 2004).
Ser. No. 77046679
4
In view of the above, the examining attorney’s
objection is sustained, and the third-party registration
evidence has not been considered in reaching our decision.
We acknowledge, however, that the USPTO uses “Maple leaf”
as a design code for searching trademarks. (Design Search
Code Manual, Category 05.03.03).
Applicant, in its brief, also refers to certain
information retrieved from Wikipedia. The examining
attorney has not raised any issue with respect to the
accuracy of the Wikipedia evidence relating to the Canadian
flag relied upon by applicant, nor has he objected to the
timeliness of the submission; rather, he has referred to it
in his brief. Accordingly, we have considered this
evidence. In re Carrier Consulting Corp., 84 USPQ2d 1028,
1032 (TTAB 2007).
Section 2(b) of the Trademark Act, 15 U.S.C. §1052(b),
provides that “[n]o 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...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.” The Trademark Manual
Ser. No. 77046679
5
of Examining Procedure (TMEP) §1204 (5th ed. 2007) comments
on this statutory provision as follows:
Section 2(b) of the Trademark Act, 15
U.S.C. §1052(b), bars the registration
on either the Principal Register or the
Supplemental Register of marks that
consist of or comprise (whether
consisting solely of, or having
incorporated in them) the flag, coat of
arms, or other insignia of the United
States, of any state or municipality,
or of any foreign nation. Section 2(b)
also bars the registration of marks
that consist of or comprise any
simulation of such symbols.

Section 2(b) differs from the provision
of §2(a) regarding national symbols
(see TMEP §1203.03(b)) in that §2(b)
requires no additional element, such as
disparagement or a false suggestion of
a connection, to preclude registration.

This section of the TMEP goes on to state that flags and
coats of arms are specific designs formally adopted to
serve as emblems of governmental authority. The wording
“other insignia” has not been interpreted broadly, but is
considered to include only those emblems and devices that
also represent such authority and that are of the same
general class and character as flags and coats of arms.
See In re U.S. Department of the Interior, 142 USPQ 506
(TTAB 1964). 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
Ser. No. 77046679
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under Section 2(b). See Knorr-Nahrmittel A.G. v. Havland
International, Inc., 206 USPQ 827, 833 (TTAB 1980).
An Examination Guide sheds additional light on Section
2(b) refusals. The Office issued, on November 27, 2007,
Examination Guide 2-07 pertaining to “Section 2(b) – Flags
and Government Insignia.” Although the guidelines
contained therein are helpful in reaching our decision,
surprisingly neither the examining attorney nor applicant
cited to this guideline in the briefs.2
The guide includes, in pertinent part, the following
language relating to flags and simulations of flags:
Registration must be refused under
§2(b) if the design sought to be
registered includes a true
representation of the flag of...any
foreign nation, or is a simulation
thereof. A refusal must be issued if
the design would be perceived by the
public as a flag, whether or not other
matter appears with or on the flag.
The examining attorney should consider
the following factors, in regard to
both color drawings and black-and-white
drawings, to determine whether the
design is perceived as a flag: 1)
color; 2) presentation of the mark; 3)
words or other designs on the drawing;
4) use of the mark on the specimens.

Generally a refusal should be made
where a black-and-white drawing
contains unmistakable features of the

2 Given that the guide issued in November 2007, the briefs were
the first opportunity for applicant and the examining attorney to
rely on the guide.
Ser. No. 77046679
7
flag, or contains features of the flag
along with indicia of a nation...

The evidence of record shows that on February 15,
1965, the Canadian Parliament adopted the flag depicted
below as the national flag of Canada. Since the
introduction of the Canadian flag, “the maple leaf has
become the country’s most important national symbol.”
(www.dfait-maeci.gc.ca).3

Wikipedia describes the flag as follows: “a vertical
bicolour triband of red, white, and red in a 1:2:1 ratio,
with a red maple leaf charged in the Canadian pale in the
center.” Another description reads as follows: “two
vertical bands of red (hoist and fly side, half width),
with white square between them; an 11-pointed red maple
leaf is centered in the white square; the official colors
of Canada are red and white.” (www.
cia.gov./cia/publications/factbook). The term “maple
leaf,” as defined in relevant part, means “the leaf of the

3 The cited website is the official website of the department of
“Foreign Affairs and International Trade Canada,” a branch of the
Canadian government.
Ser. No. 77046679
8
maple, used as the Canadian national emblem.”
(www.askoxford.com).
It is clear that applicant’s mark does not include the
entirety of the actual Canadian flag. Thus, the issue for
us to decide is whether what is shown in the mark is a
“simulation,” as contemplated by Section 2(b), of the
Canadian flag. 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 actual flag].

Focus must be on general recollection
of the [flag] by purchasers, and a
comparison of it with applicant’s mark.

In re Advance Industrial Security, Inc., 194 USPQ 344, 346
(TTAB 1977). See also In re Waltham Watch Co., 179 USPQ
59, 60 (TTAB 1973).
The analysis of what constitutes a “simulation” should
not be a strictly quantitative one. While we must consider
that the “1:2:1” ratio of the Canadian flag is not present
Ser. No. 77046679
9
in applicant’s mark and that a majority of the flag’s
features are depicted in the mark, we must ultimately
balance these considerations against the overall visual
impression made by the mark.
The fact that the maple leaf and bar design portion of
applicant’s mark either suggests or calls to mind the
Canadian flag is insufficient to bar registration of the
design as a simulation of the Canadian flag. In our view,
the maple leaf and bar design does not look like the
Canadian flag or a simulation of the flag; rather, the
design comprises disembodied elements of the flag. After
seeing applicant’s mark, the viewer must still provide
substantial, additional details to complete an image of the
flag of Canada.
Applicant’s mark does not include an outline of the
flag, thereby making it even less apparent that a flag is
being depicted. Further, in the location where the left
side bar of the Canadian flag would be, applicant’s mark
contains words, thereby adding to our view that the design
only suggests the Canadian flag, and is not a simulation of
a flag. As applicant points out: “CANADA is positioned on
Applicant’s Mark such that it takes up the area where the
entire first ‘colour band,’ and most of the second white
band, would be on the official flag of Canada,” and “the
Ser. No. 77046679
10
official Canadian flag does not include any words anywhere
on its authentic design.” (Brief, p. 6). Rather than
enhancing the perception that the mark is a simulation of
the Canadian flag, we find that, if anything, the location
of the words “BORN IN CANADA SPREADING ALL OVER THE WORLD,”
next to disembodied elements of the Canadian flag, detracts
from any perception that the mark is a simulation of a
flag. Applicant’s mark simply suggests the Canadian origin
of its services in the same manner that a red, white and
blue design with stars suggests an American product.
We emphasize that the test is not whether purchasers
will be able to guess that the mark is suggesting a
national flag. If that were the case, many marks that
suggest the American flag by incorporating a stylized red,
white and blue design with stars would be barred from
registration under Section 2(b). We do not read the
prohibitions of Section 2(b) to reach such marks.
Our decision herein is in accord with the guidance
offered in Examination Guide 2-07. Of particular
significance to the present case is the following language:
C. Stylized flag designs are not
refused under Section 2(b)

Marks containing elements of flags in a
stylized or incomplete form are not
refused under Section 2(b). The mere
presence of some significant elements
Ser. No. 77046679
11
of flags, such as stars and stripes
(U.S. flag) or a maple leaf (Canadian
flag) does not necessarily warrant a
refusal.

If the flag design fits one of theses
scenarios, do not refuse registration
under Section 2(b):

*****

2. The flag is substantially
obscured by words or designs.

*****

5. A significant feature is
missing or changed.
[emphasis added]

The examples below are set forth in Appendix B of the
Examination Guide as “Stylized Designs That Are Registrable
Under Section 2(b).” [emphasis in original]
2. Flag Is Substantially Obscured By Other Matter - No
Section 2(b) Refusal

Ser. No. 77046679
12
5. Significant Feature Is Changed - No Section 2(b) Refusal

As indicated above, the Canadian flag is significantly
changed in applicant’s mark. Further, the missing flag
portion is replaced by wording.
As a second ground for refusal the examining attorney
contends that the mark includes an official insignia of
Canada, namely an 11-pointed maple leaf. The examining
attorney characterizes it as “an important Canadian emblem
of governmental authority and is protected under Article
6ter of the Paris Convention” and that “the maple leaf is
almost universally considered by the public as an emblem of
Canada.”
Insofar as a maple leaf acting as the national
insignia of Canada, the following information is of record:
The maple leaf has been associated with
Canada for some time; in 1868, it
figured in coats of arms granted to
Ontario and Quebec, and in both World
Wars, it appeared on regimental badges.
Since the 1965 introduction of the
Canadian flag, the maple leaf has
become the country’s most important
Ser. No. 77046679
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national symbol. (www.dfait-
maeci.gc.ca)

Inasmuch as the 11-pointed maple leaf design is not a
flag or coat of arms, we consider whether the design is an
“insignia” of Canada as contemplated by Section 2(b). As
indicated earlier in this opinion, the wording “other
insignia” “should not be interpreted broadly, but should be
considered to include only those emblems and devices that
also represent [governmental] authority and that are of the
same general class and character as flags and coats of
arms.” TMEP §1204 (5th ed. 2007). See also U.S. Department
of the Interior, 142 USPQ at 507; and Examination Guide 2-
07.
When we consider the 11-pointed maple leaf design
under such guidelines, we find that the design does not
constitute an “insignia” that is prohibited registration by
Section 2(b). A variety of mundane, everyday symbols are
used by countries and governments at all levels. The
symbols include a wide range of animals (e.g., eagles,
bears, etc.) and vegetation (e.g., trees, flowers, etc.).
The 11-pointed maple leaf design, standing alone, does not
rise to the level of being an emblem of Canadian
governmental authority. That is to say, the record falls
short of establishing that an 11-pointed maple leaf design
Ser. No. 77046679
14
per se has been adopted by the Canadian government to
signify governmental or sovereign authority. Although the
11-pointed maple leaf design may be a national symbol that
is suggestive of the Canadian government, the record does
not prove that the Canadian government has specifically
adopted the design as an “insignia” to represent the
government. See Liberty Mutual Insurance Co. v. Liberty
Insurance Co. of Texas, 185 F.Supp. 895, 127 USPQ 312, 323
(E.D. Ark. 1960) [a representation of the Statue of Liberty
held not to be an “insignia of the United States”]; and
Heroes Inc. v. The Boomer Esiason Hero’s Foundation Inc.,
43 USPQ2d 1193, 1197-98 (D.D.C. 1997) [a representation of
the U.S. Capitol building does not violate Section 2(b)
because the Capitol is not an “insignia of the United
States”]. Thus, in the context of this case, while the 11-
pointed maple leaf may serve as a national symbol of
Canada, in the same manner that the U.S. Capitol building
or the Statue of Liberty serves as a symbol of the United
States, we find that the 11-pointed maple leaf does not
qualify for protection as an “insignia” under Section 2(b).
Decision: The refusal to register under Section 2(b)
is reversed.