In In re Peter S. Herrick, P.A. (76653159), the Trademark Trial and Appeal Board (“TTAB”) affirmed the Examining Attorney’s refusal to register the applicant’s mark U.S. CUSTOMS SERVICE and design on all grounds. The TTAB refused the applicant’s mark under sections 15 U.S.C. §1052(a) of the Trademarks Act [false suggestion in connection with a national symbol] and 15 U.S.C. §1052(b) [simulation of an insignia of the U.S. government]. Also, the TTAB refused the applicant’s mark on the ground that the applicant failed to provide a color drawing conforming to the requirements of the Trademark Rules 2.52-2.54, 37 CFR§§ 2.52-2.54.

A: On the issue of whether the applicant’s mark falsely suggested a connection with U.S. Customs and Border Protection under section 15 U.S.C. §1052(a), the TTAB held that as a preliminary matter‚ “institutions” as used in section 2(a) includes government agencies (since section 45 of the Trademark Act, 15 U.S.C. §1127, defines a “person” as including “the United States, any agency or instrumentality thereof.”)

The TTAB then used the following four-part test to conclude that the applicant’s mark falsely suggested a connection with the U.S. Customs and Border Protection, thereby precluding registration under section 15 U.S.C. §1052(a) (as per University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc. (703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983)): The test and reasoning of the TTAB is as follows:

1. Whether the applicant’s mark is a close approximation of the name or identity of United States Customs and Border Protection? The TTAB held the mark was a close approximation of the former name and/or current identity of the U.S. Customs and Border Protection.

2. Whether the applicant’s mark points uniquely and unmistakably to the United States Customs and Border Protection? The TTAB held the mark points uniquely and unmistakably to US Customs and Border Protection.

3. Whether United States Customs and Border Protection is connected with the applicant’s legal services (i.e. the activities performed by the applicant under the mark)? The TTAB held the U.S. agency has no connection with the applicant’s business.

4. Whether the United States Customs Service’s name or reputation is sufficiently famous that a connection with United States Customs and Border Protection would be presumed when applicant’s mark is used in connection with applicant’s services? The TTAB held there was a connection between the applicant’s services, and that the activities of the government agency would be presumed when the applicant uses the mark U.S. Customs Service and design in connection with its legal services.

The TTAB went further to state that based on the applicant’s use of a virtually identical seal of the former U.S. Customs Service in connection with the applicant’s services “concentrating its legal practice in U.S. Customs law”, an inference could be drawn that the applicant actually intended to create a connection with the U.S. Customs and Border Protection.

In view of the facts, and the affirmative to each of the elements in the four part test, the TTAB held the applicant’s mark falsely suggested a connection with the U.S. Customs and Border Protection, thereby precluding registration under section 15 U.S.C. §1052(a).

B: On the issue of whether the applicant’s mark consists of or comprises an insignia of the United States or a simulation thereof under 15 U.S.C. §1052(b), the TTAB held they were virtually identical, and that the average person upon seeing the applicant’s mark would associate it with the Department of Treasury seal. Therefore, the applicant’s mark consists of or comprises a simulation of an insignia of the U.S. thereby prohibiting registration.

C: On the issue of whether the applicant’s mark complies with the requirements of the Trademark Rules 37 CFR§§ 2.52-2.54, the TTAB held that the applicant ignored the requirements for a new color drawing, and therefore the application should have been deemed abandoned. Originally the applicant submitted only a black and white drawing of the mark, but claimed the colors blue, yellow and white as features of the mark. The Examining Attorney repeated and made final the requirement for a substitute drawing, and the applicant did not respond as is required under 37 CFR§2.54 Accordingly, the TTAB held that because the applicant claimed color as a feature of the mark but did not provide a color drawing, the black and white drawing filed by the applicant was unacceptable.