1202.17    Universal Symbols in Marks

The term "universal symbol" refers to a design, icon, or image that is commonly used in an informational manner and conveys a widely recognized or readily understood meaning when displayed in its relevant context. See Webster’s New World College Dictionary 1356 (3rd ed. 1997) (defining "symbol" as "something that stands for, represents, or suggests another thing; esp., an object used to represent something abstract); id. at 1460 (defining "universal" as "used, intended to be used, or understood by all"). Universal symbols are typically available for use by anyone to quickly provide notice of a particular condition or to indicate a characteristic of an object or area. Thus, they appear in a variety of places, such as on road signs, near dangerous machinery, on medical apparatus, in hazardous locations, on product warning labels, or on materials connected with recycling activities. Usually, the context in which a universal symbol appears is crucial in determining the symbol’s significance.

Matter that is specifically protected by statute or registered as a mark should not be considered to be a universal symbol. See TMEP §1205. For example, certain symbols that have a widely recognized meaning, such as the Red Cross, are subject to specific statutory protections restricting their use and may be refused under various provisions of the Trademark Act. See TMEP §1205.01.

The following are examples of common universal symbols:

The recycling symbol typically designates materials that are recyclable or recycled, but may also indicate that goods or services involve recycling or are otherwise environmentally friendly. See, e.g., Recyclenow.com, Recycling Symbols Explained, https://www.recyclenow.com/recycling-knowledge/packaging-symbols-explained  (accessed June 16, 2021).

The international radiation symbol indicates proximity to a source of radiation or radioactive materials. See, e.g., U.S. Dept. of Health & Human Servs., Examples of Radiation Signs and Symbols for Work Areas, Buildings, Transportation of Cargo, https://www.remm.hhs.gov/radsign.htm  (accessed April 4, 2022).

The biohazard symbol indicates the presence of pathogens or other matter that is potentially harmful or poses a health risk. See, e.g., U.S. Department of Energy, Berkeley Lab, Biohazardous Waste Labels, http://www2.lbl.gov/ehs/waste/pub-3095/wm_pub_3095_ch2.shtml  (accessed Aug. 14, 2017).

The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of "no," "not," or "prohibited." See, e.g., Free Signage.com, Prohibition Signs, http://www.freesignage.com/prohibited_signs.php  (accessed June 16, 2021).

1202.17(a)    Relevance of Universal Symbols to Examination

Universal symbols may appear as one element of a mark, or they may form an entire mark. The informational aspect of these symbols is often at odds with the functions of trademarks and service marks: to identify and distinguish one’s goods or services and indicate their source. Specifically, a universal symbol may fail to function as a mark because it only imparts information, conveys an informational message, or provides ornamentation. See 15 U.S.C. §§1051, 1052, 1053, 1127; TMEP §§1202, 1202.03, 1202.04. In addition, a universal symbol may merely describe a feature, quality, function, purpose, or characteristic of goods or services. See15 U.S.C. §1052(e)(1);  TMEP §§1209, 1209.01(b). If a universal symbol in a mark creates a false impression about a characteristic or quality of an applicant’s goods or services, the mark may be deceptive or deceptively misdescriptive. See 15 U.S.C. §§1052(a),  1052(e)(1); TMEP §§1203.02–1203.02(g), 1209.04. As explained in TMEP §1202.17(b), however, registration of a universal symbol may be permissible in some instances.

1202.17(b)    Reviewing Marks Containing Symbols

For each application, the examining attorney must determine whether the mark contains a universal symbol. Some universal symbols, such as the recycling symbol, are immediately identifiable. Others may not be, and applications for marks containing a symbol do not always identify the symbol, explain its significance, or indicate whether it is shown in a stylized or unusual form.

1202.17(b)(i)    Identifying Universal Symbols in Marks

If a mark includes or consists of a symbol (or an unfamiliar symbol-like element), the examining attorney should review the application for any information the applicant may have provided about the symbol and ensure that an accurate description is included in the record. See TMEP §§ 808.03, 808.03(b), (d). The examining attorney may also use the mark’s assigned design codes to determine the name of the symbol and to search the Trademark database for applications and registrations that describe the symbol. See TMEP §104. If the design codes assigned to the mark do not accurately reflect the significant elements of the mark, the examining attorney should ensure that the design codes are updated so that the correct codes are listed. See TMEP §808.03(f). After identifying the symbol, the examining attorney may find additional information about it by using Internet search engines or symbol reference websites.

Even without the name of the symbol, the examining attorney may be able to find information about it by entering a textual description of it in an Internet search engine. For instance, one could find information about the recycling symbol, even without knowing the name of the symbol, by using the following textual description in a search engine query: "green curved arrows triangle." Additionally, the examining attorney could consult a symbol reference website that provides a means of searching based on a symbol’s graphical characteristics. See Symbols.com, Graphical Index, http://www.symbols.com  (accessed June 16, 2021).

In addition, the Trademark Law Library holds a number of reference books about symbols and their meaning, and its librarians are available to assist USPTO personnel in researching questions regarding the identity, significance, and use of symbols. Furthermore, under Trademark Rule 2.61(b), the examining attorney may require the applicant to provide additional information about an unfamiliar symbol in a mark. 37 C.F.R. §2.61(b).

The examining attorney’s research may show that a symbol (or symbol-like element) in a mark is not a universal symbol. However, other symbols, symbol-like elements, and designs that are not universal symbols may nonetheless be perceived only as informational matter and thus fail to function as marks. In these instances, the examining attorney need not take any further action with respect to the universal symbol analysis, but should ensure that the application record contains a mark description that accurately describes the significant elements of the mark. TMEP §§808.01, 808.02, 808.03(b). The examining attorney should otherwise review the application according to standard USPTO practice and determine whether it complies with all applicable trademark statutes and rules.

1202.17(b)(ii)    Marks Displaying an Unusual Depiction of a Universal Symbol

If the mark contains a universal symbol, the examining attorney must determine whether the mark displays the symbol in the usual manner or otherwise features an accurate depiction of the symbol. This may be done by comparing the symbol in the mark with any accurate depictions of the symbol the examining attorney finds while researching the symbol.

Generally, a universal symbol in a mark should be considered registrable matter if it is highly stylized, if it incorporates elements that are not usually in the symbol, or if it is integrated with other matter in the mark, and, as a result, a distinctive commercial impression separate and apart from the symbol’s usual significance is created or a source-indicating unitary whole is formed. Cf. In re LRC Prods. Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (noting that "where designs or representations were more realistic and where the design left no doubt about the depiction of a central feature or characteristic of the goods or services," the Trademark Trial and Appeal Board has found that such designs and representations are merely descriptive); TMEP §1213.03(c) ("No disclaimer of highly stylized pictorial representations of descriptive matter should be required[,] because the design element creates a distinct commercial impression."); TMEP §1213.05(f) ("The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary."); TMEP §1213.05(g)(iv) ("If literal and design elements in a mark are so merged together that they cannot be divided or regarded as separable elements, these elements may be considered unitary."). However, displaying an accurately depicted universal symbol as a replacement for a letter in a mark’s literal element normally will not change the symbol’s usual impression (or create a unitary whole), nor will minor alterations to the symbol, such as slight stylizations or nondistinctive changes to color scheme or proportions. Cf. TMEP §§1213.03(c), 1213.05(g).

1202.17(b)(iii)    Marks Displaying an Accurate Depiction of a Universal Symbol

If the mark displays the universal symbol in the usual manner, or otherwise features an accurate depiction of the symbol, the examining attorney must determine whether, in view of the identified goods or services, it is necessary to issue a refusal or disclaimer requirement based on failure to function, mere descriptiveness, deceptive misdescriptiveness, or deceptiveness grounds. See TMEP §§1202.17(c)(i), 1202.17(d)(i)-(d)(ii).

1202.17(c)    Failure to Function

The USPTO will not register an applied-for designation unless it functions as a mark. See 15 U.S.C. §§1051, 1052, 1053, 1127; In re Team Jesus LLC, 2020 USPQ2d 11489, at *2 (TTAB 2020) (quoting In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960) ("Before there can be registrability, there must be a trademark (or a service mark). . . ."); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) ("Registration presupposes the existence of a trademark to be registered."); TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others. See 15 U.S.C.  §1127; TMEP §1202. Not every designation that a party places on goods or packaging, or uses in connection with services, necessarily performs these source-indicating functions, regardless of the party’s intentions when adopting the designation. In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *2-3 (TTAB 2020) (quoting In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016) (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009); Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973).

1202.17(c)(i)    Determining Whether a Universal Symbol Functions as a Source Indicator

The determination of whether a universal symbol in a proposed mark functions as a source indicator involves considering the meaning and significance of the symbol, the nature of the use of the symbol in the relevant field or marketplace, and the impression created when the symbol is used in connection with the identified goods or services. Cf. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (TTAB 2021) (citing In re Greenwood, 2020 USPQ2d 11439, at *2 (TTAB 2020)) ("The critical inquiry in determining whether a proposed mark functions as a trademark [or service mark] is how the relevant public perceives the term sought to be registered."); In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *2 (TTAB 2020) (quoting In re Eagle Crest, Inc., 96 USPQ 1227, 1229 (TTAB 2010)).

Relevant evidence of a symbol’s significance and usual manner of use includes the resources referenced in TMEP §1202.17(b)(i), any other competent materials indicating the meaning of the symbol, and Internet excerpts or similar matter showing the symbol being used in a particular field or context, or in connection with the relevant goods or services.

Weighing these considerations in view of the available facts and evidence may lead the examining attorney to the conclusion that the mark does not serve as a source indicator, but instead fails to function because it (1) imparts information about the goods or services (see TMEP §1202.17(c)(i)(A)), (2) conveys an informational message (though not necessarily about the goods or services themselves) (see TMEP §1202.17(c)(i)(A)), or (3) serves only as ornamentation on the goods or services (see TMEP §1202.17(c)(i)(B)).

1202.17(c)(i)(A)    Informational Universal Symbols

Universal Symbols that Impart Information About the Goods or Services

Merely informational matter is not registrable as a trademark or service mark. See TMEP §1202.04. When a universal symbol in a mark is used in its usual context or field, or with relevant goods or services, it will likely impart its generally recognized meaning and thus perform only an informational function, rather than serve to identify any single source of the goods or services. Cf. In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *1, *9 (TTAB 2019) (holding the mark ALL NATURAL 100% REAL CALLINECTES CRAB GOURMET CRABMEAT PASTEURIZED and the same mark with the additional wording FROM NORTH AMERICA, which both included a design of an accurate pictorial representation of a crab, failed to function as marks for crabmeat); In re Schwauss, 217 USPQ 361, 362-63 (TTAB 1983) (holding the mark FRAGILE appearing in a "jarred or broken" stylization failed to function as a mark for labels and bumper stickers); TMEP §1202.04(a). For instance, because the biohazard symbol commonly appears on items to indicate the presence of hazardous materials, the symbol is unlikely to function as a trademark on goods such as containers for disposing of medical waste. See, e.g., Graphic Products, Biohazard Signs, https://www.graphicproducts.com/biohazard-signs/?page=1  (accessed June 16, 2021).

In these circumstances, the symbol’s position, prominence, and surrounding context on the specimen of use will not be as significant in the analysis, because the symbol will function only as informational matter regardless of its manner of use on the specimen. Cf. In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *18 (TTAB 2019) (affirming refusal to register SCOOP for ice cream and frozen confections "because, at most, it merely informs purchasers of the serving size of the goods"); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (affirming refusal to register DRIVE SAFELY because "to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . ."); In re Schwauss, 217 USPQ at 362 ("[T]o allow registration [of stylized word FRAGILE for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object."). Nonetheless, the examining attorney should analyze how the mark (and the symbol in it) is used on the specimen because it may lend further support to the failure-to-function refusal. Cf. In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *2 (TTAB 2019) (affirming refusal to register UNLIMITED CARRYOVER for telecommunications services because the phrase "simply provides information about the services" and applicant’s manner of use underscored and illustrated that meaning).

Sometimes a symbol is applied to goods or services outside the symbol’s normal context and the symbol could therefore serve a source-indicating function. Thus, the biohazard symbol could function as a service mark for live musical-performance services, for example, because the symbol would not provide any relevant information about the services, even when encountered by someone who knows what the symbol usually means.

Universal Symbols that Convey an Informational Message

Even if a proposed mark does not directly impart information about goods or services, it may nonetheless fail to function as a mark if it merely conveys ordinary or familiar concepts or sentiments, as well as social, political, religious, or similar informational messages in common use. Cf. In re Team Jesus, LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020)). For example, common phrases and slogans that are frequently displayed by many different parties on various products or with various services are not likely to be viewed as source indicators, even if the matter is being used in a non-ornamental manner. Cf. In re Mayweather Promotions, 2020 USPQ2d 11298, at *2; In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1153 (TTAB 2019). Instead, such goods would likely be purchased for the message the phrase or slogan conveys. Cf. In re Wal-Mart Stores, 129 USPQ2d at 1152. See TMEP §1202.04 regarding marks consisting of informational matter.

Likewise, when certain commonly used universal symbols appear on goods such as clothing, fashion accessories, and household items, they would likely be perceived as conveying an informational message and the goods featuring these symbols would likely be purchased for that reason. For example, evidence may show that when the recycling symbol appears on the upper-left chest area of a t-shirt, those encountering the shirt are likely to assume that it indicates support for recycling or environmental causes in general. Or evidence may support the conclusion that a peace symbol used on t-shirts or stickers likely will not function as mark, because even if it is not ornamental and does not necessarily provide any particular information about the goods themselves, it is informational in the sense that it conveys a message of supporting peace.

The examining attorney may support a failure-to-function refusal in these cases by providing evidence that indicates the widely recognized meaning of the symbol, establishes that the symbol is commonly used to convey particular information, and shows that the symbol commonly appears on the goods or in connection with the services at issue or analogous goods or services. Cf. In re Wal-Mart Stores, 129 USPQ2d at 1153-56. Factors such as the symbol’s position and prominence on the goods, as shown by the specimen of use, may also support the determination that the matter will be perceived only as conveying a message. Cf. In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3. As with any other substantive refusal, the amount, type, and nature of the evidence required to support a failure-to-function refusal will vary depending on the facts of the particular application.

Although this issue is more likely to arise when universal symbols are displayed on goods, it is also possible for a universal symbol to convey an informational message when used in connection with services.

1202.17(c)(i)(B)    Ornamental Universal Symbols

Matter that serves only as an ornamental feature of goods does not identify and distinguish the goods and, thus, does not function as a trademark. TMEP §1202.03. Like any other design element, universal symbols may be used ornamentally on goods such as clothing, jewelry, fashion accessories, and household items. In these instances, the symbol’s position, prominence, and surrounding context on the specimen are particularly significant in determining whether the matter serves as ornamentation. For more information on the relevant considerations, see TMEP §§1202.03–1202.03(d).

The examining attorney should not suggest the usual response options for an ornamental refusal (i.e., showing secondary source, claiming acquired distinctiveness, or amending to the Supplemental Register) unless the proposed mark is capable of serving as a mark and does not also fail to function because it imparts information or conveys an informational message. See TMEP §1202.03.

1202.17(c)(ii)    Mark Consists Entirely of a Universal Symbol that Fails to Function

If a proposed mark consists entirely of a universal symbol and the examining attorney determines that the universal symbol fails to function as a source indicator for the identified goods, the examining attorney must issue a refusal to register the mark on the Principal Register under Trademark Act Sections 1, 2, and 45. 15 U.S.C. §§1051, 1052, 1127. For service marks, the refusal is based on Trademark Act Sections 1, 2, 3, and 45. 15 U.S.C. §§1051, 1052, 1053, 1127. For applications seeking registration on the Supplemental Register, the statutory basis for the failure-to-function refusal is Trademark Act Sections 23 and 45. 15 U.S.C. §§1091, 1127.

When issuing a failure-to-function refusal, the examining attorney must explain the particular reasons the mark does not function as a trademark or service mark and provide sufficient evidence in support of the explanation. Cf. In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 (TTAB 2020) (finding "the [e]xamining [a]ttorney's evidence establishes not only that PAST PRESENT FUTURE is a widely used message that conveys a concept, but also that consumers are accustomed to seeing that message displayed in a non-source identifying manner on t-shirts. Taken together, these two forms of evidence strongly support a finding that PAST PRESENT FUTURE is not perceived as a mark when used in connection with t-shirts"); In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *2-3 (TTAB 2019) (finding that the examining attorney’s dictionary and third-party website evidence "supports a finding that UNLIMITED CARRYOVER as used on the specimen will be perceived as merely an informational slogan which conveys information about [the services] rather than as a service mark to indicate source"); TMEP §§1202, 1301.02(a). See TMEP §1202.17(b)(i) and §1202.17(c)(i) for further discussion of evidence.

1202.17(c)(ii)(A)    Applications Based on Sections 1(b), 44, or 66(a)

Generally, the failure-to-function refusal is a specimen-based refusal. TMEP §§1202, 1301.04(g)(ii). However, the examining attorney may issue a failure-to-function refusal for applications based on §1(b), §44, or §66(a) if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark. See TMEP §§1202, 1301.04(g)(ii).

If the examining attorney is otherwise issuing an Office action and anticipates refusing a mark in a §1(b) application on failure-to-function grounds once the applicant submits a specimen with an allegation of use, the examining attorney should advise the applicant of the potential refusal. TMEP §§1202, 1301.04(g)(ii). If possible, this should be done in the initial Office action. However, failure to provide an advisory does not preclude an examining attorney from later refusing registration. Id.

1202.17(c)(ii)(B)    Applicant’s Response to Refusal

If a proposed mark fails to function because it consists of a universal symbol that is informational or that conveys an informational message, the examining attorney should not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8;(TTAB 2019); see also TMEP §1202.04(d). The relevant issue is not whether the proposed mark is distinctive but whether it question even functions as a mark. See In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *4 (TTAB 2019) ("Matter that does not operate to indicate the source or origin of the identified services and distinguish them from those of others does not meet the statutory definition of a [trademark or] service mark and may not be registered, regardless of claims of acquired distinctiveness."); In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (agreeing with the examining attorney that "evidence of distinctiveness under Section 2(f) of the Act is irrelevant to the issue of whether the subject phrase [at issue] functions as a technical service mark"). Therefore, neither a claim of acquired distinctiveness under Trademark Act Section 2(f) nor an amendment to the Supplemental Register is a proper response to the refusal. See TMEP §1202.04(d). Furthermore, allowing registration in these instances, either on the Principal Register under Section 2(f) or on the Supplemental Register, would inhibit others from using merely informational matter that should be freely available to use. See TMEP §1202.04 regarding marks consisting of merely informational matter.

In addition, the examining attorney should not suggest that the applicant submit a substitute specimen or amend to an intent-to-use filing basis in these cases. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (quoting D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016)); see also TMEP §1202.04(d). If the mark is informational or conveys an informational message, the applicant likely will be unable to provide a specimen showing proper trademark or service mark use. The applicant may amend the application to an intent-to-use basis, but it likely will only temporarily overcome the refusal, given that a specimen showing proper trademark or service mark use is required before a registration may issue. See TMEP §1103. The examining attorney must review any substitute specimen submitted to confirm that the refusal should be maintained.

Finally, if a proposed mark consisting of a universal symbol fails to function as a mark only because it is used in an ornamental manner on the specimen, and it is possible the proposed mark could function as a mark if used in a trademark manner, then all of the response options discussed immediately above should be suggested by the examining attorney, if otherwise appropriate. See TMEP §§1202.03-1202.03(e) regarding refusing marks on the basis of ornamentation and appropriate response options.

1202.17(c)(iii)    Mark Includes a Universal Symbol that Fails to Function

If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears along with other non-source-indicating matter, the examining attorney must issue a failure-to-function refusal. See TMEP §1202.17(c)(ii).

If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears in a non-unitary manner with other registrable matter that is arbitrary, fanciful, suggestive, or otherwise source-indicating, the examining attorney must require a disclaimer of the universal symbol. See Trademark Act Section 6(a), 15 U.S.C. §1056(a);  TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a). The examining attorney should not suggest that the applicant claim acquired distinctiveness in part as to the symbol. See TMEP §1202.17(c)(ii)(B).

An applicant may also delete a purely informational universal symbol that appears along with other registrable matter, provided the symbol is separable from the other matter and the deletion does not materially alter the commercial impression of the mark. See TMEP §807.14(a).

1202.17(d)    Other Relevant Refusals

The examining attorney should also consider the following potential grounds for refusal when reviewing a mark featuring a universal symbol. In addition to those discussed below, the examining attorney should determine whether there is a sufficient basis for any other relevant refusals (e.g., a §2(d) refusal).

1202.17(d)(i)    Merely Descriptive

Often, when the examining attorney has determined that a universal symbol fails to function because it only provides information about the goods or services, the available evidence will also support a refusal (or a disclaimer requirement) under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), based on mere descriptiveness.

If a mark consists of a merely descriptive universal symbol and other descriptive, generic, or otherwise non-source-indicating matter, then the mark is merely descriptive in its entirety and the examining attorney must issue a refusal under §2(e)(1). If a mark consists of a merely descriptive universal symbol, along with other arbitrary, fanciful, or suggestive matter, the examining attorney must require a disclaimer of the universal symbol unless the composite mark creates a unitary commercial impression. See Trademark Act §6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a).

When both a §2(e)(1) and a failure-to-function refusal are issued, the examining attorney should not suggest that the applicant claim acquired distinctiveness or amend to the Supplemental Register. For more information, see TMEP §1202.17(c)(ii)(B).

1202.17(d)(ii)    Deceptive or Deceptively Misdescriptive

The inclusion of a universal symbol in a mark may lead consumers to believe the goods or services have a particular characteristic or quality. For instance, evidence may show that a mark featuring the recycling symbol would lead to a perception that the goods to which the mark is applied are recyclable or are made of recycled materials.

If the relevant goods or services do not have the relevant characteristic or quality, then the mark may be deceptive under Trademark Act Section 2(a) or deceptively misdescriptive under Section 2(e)(1). In those instances, the examining attorney should follow the same procedures as would apply to any deceptive or deceptively misdescriptive mark. For more information, see TMEP §§ 1203.02–1203.02(g) and 1209.04.

1202.17(e)    Universal Symbols Commonly Appearing in Marks

The universal symbols discussed below frequently appear in applied-for marks. Some of these symbols are so widely used and well known that they will have only non-trademark significance when used with almost any good or service in any context or field. Others will fail to function as source indicators only when used with particular goods or services. Nonetheless, all of these symbols could function as source indicators if they are displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. See TMEP §1202.17(b)(ii). Like any design element, all of these symbols may be used in an ornamental manner on goods and, if so, should be refused accordingly. Finally, depending on the particular facts and available evidence, other grounds for refusal may apply to marks containing these symbols (e.g., Section 2(e)(1), Section 2(d), Section 2(a)).

1202.17(e)(i)    Awareness Ribbon Symbols

The awareness ribbon symbol is a representation of a ribbon intended to signify and promote awareness of a particular cause. The specific cause represented depends on the color or color scheme displayed. See, e.g., Support Store, Cause Awareness By Color, https://www.supportstore.com/cause-awareness-by-color.html  (accessed June 16, 2021). For example, the pink awareness ribbon is commonly associated with awareness of breast cancer and related causes. See id. Yellow ribbons are frequently used to indicate support of the armed forces. See id. And red ribbons are typically associated with awareness of HIV/AIDS or heart disease. See id.

Due to the widespread use of the awareness ribbon in various colors to indicate support for, or raise awareness of, a cause, the awareness ribbon shape by itself will not function as a source indicator. However, the examining attorney must evaluate an awareness ribbon symbol in a mark as a whole, including the color, color scheme, pattern, or other matter inside of the ribbon, to determine whether it functions as a source indicator.

Some awareness ribbons have become so widely used and well known that they are unlikely to function as a mark when used in connection with almost any goods or services. These include ribbons in pink, yellow, red, and possibly others. The pink awareness ribbon, for example, has become the universal symbol of breast cancer awareness. This symbol appears in connection with the charity activities of numerous organizations and is used on a wide variety of products, including clothing, jewelry, sports equipment, and household items. Often, when it is used, it has informational or ornamental characteristics, or both. Thus, it is more likely that consumers, upon encountering the pink ribbon symbol on a product, would view it as informational or decorative regardless of the particular context or use. For instance, evidence may support the conclusion that, when a pink ribbon is displayed on the packaging for a household appliance, the ribbon would likely be viewed as indicating that the product has some connection to a breast cancer-related cause (e.g., some portion of the proceeds from the sale of the appliance would go towards breast cancer research). Or evidence may establish that the pink ribbon symbol displayed on a shirt would be viewed as conveying the message that the wearer is a supporter of breast cancer survivors or breast cancer causes in general. Even when an awareness ribbon symbol features a particular color, color scheme, or pattern that is not commonly used or widely recognized, the examining attorney should evaluate whether the symbol is inherently distinctive.

The actions an examining attorney will take when examining a mark featuring an awareness ribbon symbol depend on which of the following categories the awareness ribbon symbol falls under:

Category 1: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive and the evidence shows that the symbol’s use by various parties in that color, color scheme, or pattern is so widespread, and its meaning so widely understood, that it will likely be perceived as only providing information or conveying an informational message when used in connection with the goods or services.

This type of awareness ribbon symbol fails to function as a mark and the examining attorney must refuse registration if the symbol forms the entire mark or appears with only other non-source-indicating matter, or disclaim the symbol if it appears with registrable matter.

Awareness ribbon symbols in this category are incapable of functioning as a mark. Thus, if the mark consists entirely of this type of symbol, claiming acquired distinctiveness under §2(f) or amending the application to seek registration on the Supplemental Register will not overcome the refusal. Likewise, a claim of acquired distinctiveness in part will not obviate a disclaimer requirement.

Awareness ribbon symbols that do not contain inherently distinctive matter inside the ribbon, and are displayed in black and white, or gray scale, because they appear in non-color mark drawings, are incapable of functioning as a mark and would be subject to the same procedures set forth above.

Examples:

Pink ribbon

Yellow Ribbon

Black-and-White or Gray Scale Ribbon

Category 2: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive, but there is no evidence that the awareness ribbon symbol shown in the mark is widely used by various parties or that its meaning is widely understood.

In these cases, the symbol is not inherently distinctive and fails to function as a mark because, given the widespread use of awareness ribbons in various colors and patterns generally, the symbol will not be perceived as a source indicator. Thus, the examining attorney must refuse registration if the symbol forms the entire mark (or appears with other non-source-indicating matter), or require a disclaimer of the symbol if the symbol appears with registrable matter. However, the applicant may overcome the refusal by showing acquired distinctiveness based on actual evidence establishing recognition of the proposed mark as a source indicator, or by amending the application to seek registration on the Supplemental Register. For awareness ribbon symbols in this category, evidence of five years’ use usually will not be sufficient to show that the mark has acquired distinctiveness. See TMEP §§1212.06–1212.06(e)(iv) for information on establishing acquired distinctiveness by actual evidence. A disclaimer requirement may be obviated by claiming acquired distinctiveness in part as to the symbol based on actual evidence.

Examples:

for "promoting public awareness of domestic violence, sexual assault and child abuse"

for "surgery; and medical services, namely, treatment of breast disease"

Category 3: The matter inside the awareness ribbon shape in the mark is inherently distinctive or otherwise registrable (e.g., non-descriptive/non-informational wording, registrable design elements) and there is no evidence that the awareness ribbon shown in the mark is widely used by various parties or that its meaning is widely understood.

No refusal (or disclaimer) is necessary, as long as the awareness ribbon is not used ornamentally on the specimen, because the ribbon shape and the matter within it create a registrable unitary whole.

Examples:

for "charitable fund raising, namely, raising funds for breast cancer research and treatment"

for "educational services, namely, conducting conferences, workshops, seminars, and classes in the fields of autism and advocacy on behalf of autistic children and adults"

1202.17(e)(ii)    Recycling Symbol

The recycling symbol typically appears on materials to indicate that they are recyclable or made from recycled matter. See, e.g., Recyclenow.com, Recycling Symbols Explained, https://www.recyclenow.com/recycling-knowledge/packaging-symbols-explained  (accessed June 16, 2021). However, the symbol is also used in connection with a wide assortment of goods and services in a variety of fields to indicate that the goods or services involve recycling or are otherwise environmentally friendly. See id.

Because of the widespread use of the symbol and the resulting general recognition of the symbol’s significance, the symbol is not likely to function as a source indicator. Instead, the evidence will show consumers are likely to view it as merely providing information about the goods or services, in which case a failure-to-function refusal is appropriate. Even when the symbol is displayed on clothing and fashion accessories in a manner that would normally be considered trademark use, evidence will likely show the mark will be perceived as conveying an informational message (e.g., that the wearer supports recycling or environmental awareness). See In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 (TTAB 2020) (finding "the Examining Attorney's evidence establishes not only that PAST PRESENT FUTURE is a widely used message that conveys a concept, but also that consumers are accustomed to seeing that message displayed in a non-source identifying manner on t-shirts," which was strong evidence that the proposed mark did not function as a mark when used in connection with t-shirts."); See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1230 (TTAB 2010) (holding that consumers would not view the "old and familiar" slogan ONCE A MARINE, ALWAYS A MARINE as a trademark indicating the source of the applicant’s clothing because they would be accustomed to seeing it displayed on clothing from many different sources, and noting that "[i]t is clear that clothing imprinted with this slogan would be purchased by consumers for the message it conveys"). The symbol will usually also have descriptive significance as applied to the relevant goods or services.

1202.17(e)(iii)    Caduceus, Rod of Asclepius, and Prescription Symbol

The caduceus and the Rod of Asclepius are commonly used to indicate that goods or services are medical in nature or otherwise relate to the medical profession. See Webster’s New World College Dictionary 195 (3rd ed. 1997) (defining "caduceus" as "the staff of an ancient herald; esp., the winged staff with two serpents coiled about it . . . an emblematic staff like this with either one or two serpents, used as a symbol of the medical profession"); THEFREEDICTIONARY.COM, search of "Rod of Asclepius," https://medical-dictionary.thefreedictionary.com/Rod+of+Asclepius  (accessed June 16, 2021) (citing Segen’s Medical Dictionary) (defining "Rod of Asclepius" as "[t]he ‘correct’ symbol of medicine, which is a knarled [sic] wooden staff with a single encircling snake"). The prescription symbol is frequently used in connection with prescription drugs or medicated goods, or with services relating to these items. See Webster’s New World College Dictionary 1178 (3rd ed. 1997) (defining "Rx" as "symbol for PRESCRIPTION"). For any marks containing these symbols, the examining attorney should review the specimen, the relevant evidence, and the goods/services to determine if the mark functions as a source indicator or instead is merely informational. In those instances that the mark fails to function, there is likely also a valid basis for finding the symbol descriptive.

1202.17(e)(iv)    Religious Symbols

Religious symbols, such as the Latin cross and the Star of David, may be informational or have descriptive significance when used on a variety of goods and services. For example, evidence may support the conclusion that, as used in connection with media such as books or videos, the Star of David is likely to be perceived as providing information about or describing the media’s content. Or evidence may show that a Latin cross used in an advertisement for services is likely to be viewed as conveying an informational message (i.e., indicating an affiliation with Christianity). Note that a mark containing a Greek cross (i.e., an upright equilateral cross) may be subject to other refusals. See TMEP §1205.01.

1202.17(e)(v)    Currency Symbols

When used with financial services, such as currency exchange or banking, evidence will show currency symbols, such as the dollar sign or the euro symbol, will likely be informational and merely descriptive. However, when used in connection with other types of goods or services, the evidence may show these symbols to be arbitrary or suggestive and otherwise function as a mark.

1202.17(e)(vi)    Universal Prohibition Symbol

The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of "no," "not," or "prohibited." See, e.g., Free Signage.com, Prohibition Signs, http://www.freesignage.com/prohibited_signs.php  (accessed June 16, 2021). When the prohibition symbol is superimposed over other matter, the design as a whole is unitary; thus, no disclaimer of the prohibition symbol apart from the other matter is necessary. However, the examining attorney must consider whether evidence supports the conclusion that the design as a whole (i.e., the symbol and the image it is superimposed over) fails to function as a mark or is merely descriptive (or both) and thus must be refused or disclaimed.