Johnson & Johnson

Trademark Trial and Appeal Board

Oct 24, 2000

No. 75010166 (T.T.A.B. Oct. 24, 2000)

Hearing: Paper No. 15
May 31, 2000 10/24/00
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Johnson & Johnson
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Serial No. 75/010,166
_______
Norm D. St. Landau of Tucker Flyer, P.C. and Richard F.
Biribauer for Johnson & Johnson.
Jennifer Stiver Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Hanak, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 20, 1995, Johnson & Johnson filed an
application to register the mark shown below
for “first aid kits.” The application includes the
following description of the mark:
“The mark consists of a Red Greek Cross
applied to a blue colored container for
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/010166
2
first aid kits. The dotted outline of
the container is intended to show the
position of the mark and is not a part
of the mark. The drawing is lined for
the colors red and blue, and color is
claimed as a feature of the mark.”
Applicant claims the following first use dates: (i)
its “Red Greek Cross mark” in connection with medical and
surgical plasters as early as 1887; (ii) its “Red Greek
Cross mark” in connection with first aid kits in interstate
commerce as early as 1898; and (iii) its current mark in
connection with first aid kits both anywhere and in
interstate commerce as early as 1985.
Also, applicant claims ownership of Registration Nos.
54,3081; 1,870,9552; 1,888,1433 and 1,889,5764.

1 Registration No. 54,308 issued June 26, 1906, re-renewed, for
the following mark:
for “medical and surgical plasters.” The drawing is lined for
the color red. The claimed date of first use is 1887.
2 Registration No. 1,870,955, issued January 3, 1995, for the
word mark RED CROSS (in typed form) for “cotton for personal use”
and “sterile cotton for medical use.” The claimed date of first
use is 1898.
3 Registration No. 1,888,143, issued April 11, 1995, for the
following mark:
for “cotton for cosmetic use.” The drawing is lined for the
color red. The claimed date of first use is 1898.
4 Registration No. 1,889,576, issued April 18, 1995, for the “red
cross” design mark shown in footnote 3 for “first aid kits,
Ser. No. 75/010166
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The Examining Attorney initially refused registration
on two grounds: (1) that the mark falsely suggests a
connection with the American Natitonal Red Cross under
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a); and
(2) that the mark consists of or comprises a mark the use
of which is proscibed by statute, namely 18 U.S.C. §706.
The Examining Attorney withdrew the refusal to register
under Section 2(a) of the Trademark Act, and made final the
refusal to register under 18 U.S.C. §706.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs5, and both were present
at an oral hearing before this Board.
First, we must address the Examining Attorney’s basis
for the refusal to register. As explained in the Trademark
Manual of Examining Procedure at TMEP §1205.01, various
federal statutes prohibit or restrict the use of certain,
words, names, marks, insignia, seals, etc. In fact, TMEP

adhesive bandages, topical preparations for medical and
therapeutic use, medical adhesive tape, gauze, sterile cotton for
medical purposes, and wound dressings.” The drawing is lined for
the color red. The claimed date of first use is 1898.
5 Applicant attached to its brief on the case several exhibits,
specifically, copies of some court decisions, copies of
legislative history materials from 1942 Congressional hearings,
and applicant’s 1904 price list. The Examining Attorney objected
to all of these exhibits as untimely filed under Trademark Rule
2.142(d). The Board can consider judicial decisions and
legislative history even if not introduced into the record by
either side. The Examining Attorney’s objection is not well
taken except as to applicant’s 1904 price list.
Ser. No. 75/010166
4
§1205.01 includes as one example use of the Greek red cross
other than by the American National Red Cross is proscribed
by 18 U.S.C. §706. In that same section of the Manual
there is further explanation, as follows:
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.
The Manual goes on to explain various possible
refusals to register under the Trademark Act, such as,
applicant’s use of the mark would be unlawful under the
referenced statute (Sections 1 and 45 of the Trademark Act,
15 U.S.C. §§1051 and 1127), or Section 2(a) falsely
suggesting a connection with the institution or person
specified in the statute, or Section 2(b) matter comprising
a flag, coat of arms, etc.
Based on the arguments and record before us
(particularly the Examining Attorney’s argument that
applicant’s current mark is not included in the
“grandfather” provision of 18 U.S.C. §706), we construe the
Examining Attorney’s refusal to register to be one based on
Sections 1 and 45 of the Trademark Act, i.e., that
applicant’s use of this mark (the Greek red cross on a blue
background) is unlawful under 18 U.S.C. §706.
Ser. No. 75/010166
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The protecting statute, 18 U.S.C. §706 “Red Cross,”
reads, in relevant part, as follows:
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.
Upon a reading of 18 U.S.C. §706, we find that the
statute is clear on its face, and that applicant’s current
applied-for mark (the Greek red cross on a blue background)
is simply not a “Greek red cross on a white ground, or any
sign or insignia made or colored in imitation thereof”
within the plain meaning of the statute. Nor do we find
any basis to interpret “colored in imitation thereof” to
include a blue background. That is, this statute does not
prohibit applicant’s use of the applied-for mark.
Further, in the case of Johnson & Johnson v. Jack
Frost Laboratories Inc., __ F.2d __, 14 USPQ2d 1076 (Fed.
Ser. No. 75/010166
6
Cir. 1990)(listed as “unpublished” 6), the Court noted the
following:
“This is not to say Jack Frost’s marks
without a red cross might not be
registrable. Indeed, the Opposer
[Johnson & Johnson] conceded it ‘would
not object to the registration of
[applicant’s] marks if the applications
disclaim any right to use the Greek
cross portion in red on a white
background, or a colorable imitation
thereof.’ Appellant’s Brief, Johnson &
Johnson, No. 89-1291, at 15 (Fed. Cir.
filed October 23, 1989) (emphasis
added).”
See also, In re Health Maintenance Organizations, Inc., 188
USPQ 473 (TTAB 1975).
It is important to note that inasmuch as 18 U.S.C.
§706 is a criminal statute, it must be strictly construed.
See United States ex rel. Federal Bureau of Investigation
v. Societe Anonyme Francaise M. Bril and Co.,__ F.Supp. __,
187 USPQ 685, 688 (DCDC 1975).
The Board cases regarding unlawful use require a high
standard be met, i.e., clear and convincing evidence that
use would constitute a material violation of the applicable
law. In fact, the Board has stated in the past that we
will normally hold use of a mark in commerce unlawful only

6 The Board does not normally refer to “unpublished” cases, but
in this specific situation, the Court case involves a quotation
from the brief of the very party now before us.
Ser. No. 75/010166
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when the issue of lawfulness has previously been determined
by a court or governmental agency having competent
jurisdiction under the statute involved, or where there has
been a per se violation of a material portion of the
statute regulating the sale of a party’s goods. See
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1271
(TTAB 1992); Kellogg Co. v. New Generation Foods, Inc., 6
USPQ2d 2045 (TTAB 1988); and Satinine Societa in Nome
Collettivo di S.A. e M. Usellini v. P.A.B. Produits et
Appareils de Beaute, 209 USPQ 958 (TTAB 1981). Here a
criminal statute is involved, which makes it even more
imperative that any violation by applicant be first
determined by a court having competent jurisdiction under
the statute.
From the record before us, we cannot say that
applicant’s use of its applied-for mark is unlawful under
18 U.S.C. §706, as would constitute a basis for refusal
under Sections 1 and 45 of the Trademark Act.
Decision: The refusal to register is reversed.
E. W. Hanak
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board