Kappa Alpha Order

Trademark Trial and Appeal Board

Jun 3, 2011

No. 77464003 (T.T.A.B. Jun. 3, 2011)

Mailed:
June 3, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kappa Alpha Order
________

Serial No. 77463997
Serial No. 77464003
(Consolidated)
_______

Lindsay Yeakel Capps and Jack A. Wheat of Stites & Harbison
PLLC for Kappa Alpha Order.

Heather D. Thompson, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Kappa Alpha Order (applicant) has filed two
applications seeking registrations of the mark depicted
below.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 77463997 and 77464003 (consolidated)
2

In application Serial No. 77463997, applicant seeks to
register the mark as a collective membership mark (in Class
200), “to indicate membership in a collegiate fraternal
organization.”1
In application Serial No. 77464003, applicant seeks to
register the mark as a trademark for “fabric flags” (in
Class 24).2
Both applications include the following “Description
of Mark” statement:
The mark consists of a design for a flag
containing a white shield toward the center
bearing the crimson Greek letters ‘K’ and ‘A’
above a crimson-colored Greek cross with a

1 This application was filed on May 2, 2008, and is based on use
in commerce pursuant to Trademark Act Section 1(a), 15 U.S.C.
§1051(a). 1967 is asserted in the application to be the date of
first use of the mark and the date of first use of the mark in
commerce.

2 This application was filed on May 2, 2008, and is based on use
in commerce pursuant to Trademark Act Section 1(a), 15 U.S.C.
§1051(a). 1967 is asserted in the application to be the date of
first use of the mark and the date of first use of the mark in
commerce. This application includes a claim of acquired
distinctiveness pursuant to Trademark Act Section 2(f), 15 U.S.C.
§1052(f).

Ser. Nos. 77463997 and 77464003 (consolidated)
3
crimson-colored background to the left of the
shield and a gold-colored background to the right
of the shield.

Also, both applications include the following “Colors
Claimed” statement: “The color(s) crimson, white and gold
are claimed as a feature of the mark.”
In both applications, the Trademark Examining Attorney
has issued final refusals of registration under Trademark
Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127, on the
ground that the mark is not in lawful use in commerce.
Specifically, the Trademark Examining Attorney contends
that applicant’s use of the mark is not lawful use in
commerce because it is in violation of 18 U.S.C. §706
(hereinafter the “Red Cross statute” or “the statute”),
which, in pertinent part, prohibits unauthorized use of
“the emblem of the Greek red cross on a white ground, or
any sign or insignia made or colored in imitation
thereof....”3

3 The Red Cross statute provides in its entirety as follows:
§706. Red Cross.
Whoever wears or displays the sign of the Red Cross or
any insignia colored in imitation thereof for the
fraudulent purpose of inducing the belief that he is a
member of or an agent for the American National Red
Cross; or

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
Ser. Nos. 77463997 and 77464003 (consolidated)
4
Applicant has appealed the final refusals in both
applications. The appeals were consolidated by order of
the Board dated April 15, 2010, and we shall decide them in
this single opinion. The appeals are fully briefed.
We reverse the refusals to register as to both
applications.
Trademark Act Section 1(a)(1), 15 U.S.C. §1051(a)(1),
in pertinent part, provides that “the owner of a trademark
used in commerce may request registration of its
trademark....” Trademark Act Section 45, 15 U.S.C. §1127,
in pertinent part, provides that “the word ‘commerce’ means
all commerce which may lawfully be regulated by Congress.”
In an application seeking to register a mark based on
use in commerce under Trademark Act Section 1(a), such use
of the mark in commerce must be lawful use in commerce. If
the use of the mark upon which the application is based is
not lawful use in commerce, including any use in violation

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 [June 25,
1948].

Ser. Nos. 77463997 and 77464003 (consolidated)
5
of a federal statute, registration must be refused under
Trademark Act Sections 1 and 45. See In re Kayser-Roth
Corp., 29 USPQ2d 1379, 1381 (TTAB 1993); In re Stellar
Int’l, Inc., 159 USPQ 48, 51 (TTAB 1968).
Refusal of registration under Trademark Act Sections 1
and 45 based on unlawful use of the mark in commerce is
proper “when the issue of compliance [with the pertinent
statute] has previously been determined (with a finding of
non-compliance) by a court or government agency having
competent jurisdiction under the statute involved, or where
there has been a per se violation of a statute regulating
the sale of the parties’ goods.” Kellogg Co. v. New
Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988).
In the present case, the issue is whether applicant’s
mark constitutes a per se violation of the Red Cross
statute, 18 U.S.C. §706.4 Because the Red Cross statute
is penal in nature, it must be strictly construed in our
determination of whether registration of applicant’s mark
must be refused because use of the mark is or would be
unlawful under the statute. See Ex Parte National Hospital
Association, 42 USPQ 632, 632 (Comm’r of Pat. 1939).

4 There is no suggestion that applicant’s use of its mark has
previously been determined to be unlawful by a relevant court or
government agency.

Ser. Nos. 77463997 and 77464003 (consolidated)
6
The second clause of the statute makes unlawful any
“use[] [of] the emblem of the Greek red cross on a white
ground, or any sign or insignia made or colored in
imitation thereof” by anyone not duly authorized to make
such use. It appears that applicant has no such
authorization to use the Red Cross emblem; applicant does
not contend otherwise. However, we find that applicant’s
mark does not “use[] the emblem of the Greek red cross on a
white ground,” nor does it constitute a “sign or insignia
made or colored in imitation thereof.”
We find that the mark clearly depicts a Greek red
cross.5 However, we find that when the mark is viewed as a
whole, the distinctive shield design upon which the Greek
red cross appears cannot be said to be merely a “white
ground” within the meaning of the statute. Also, we find
that the presence of the prominent red letters “KA” on the
shield further serves to to make the mark, when viewed in
its entirety, more than merely “the emblem of the Greek red
cross on a white ground.”
For these reasons, and under the required strict
construction of the Red Cross statute, we find that
applicant’s mark does not violate the statute. Applicant’s
Ser. Nos. 77463997 and 77464003 (consolidated)
7
use of the mark therefore is not unlawful use, and it
suffices as the basis for registration of the mark under
Trademark Act Sections 1 and 45.

Decision: The refusals to register in both
applications are reversed.

5 In the applications, applicant has claimed the color “crimson”
as a feature of the mark. We find crimson to be a particular
shade of red (and applicant does not contend otherwise).