Italian Flag in Prosciutto Collective Mark Leads to Refusal

Overview

This case involves an appeal by Consorzio Prosciutto di Carpegna regarding the refusal of a collective trademark application for specialized Italian ham. The Trademark Trial and Appeal Board (TTAB) was tasked with determining whether a specific graphic element, a "flourish" containing three colored vertical stripes, violated the absolute bar against registering marks that consist of or comprise the flag of a foreign nation or a simulation thereof.

Background

The Applicant filed a collective trademark application seeking to register a mark for "Prosciutto from the Carpegna region of Italy made in accordance with specific standards."

The mark in question is a composite design. It features the words PROSCIUTTO DI CARPEGNA in stylized black letters. The word PROSCIUTTO appears in an arc at the top with gray shadows on the letters "SCIUTTO." Below this, the words DI CARPEGNA are positioned at a slight diagonal angle. A stylized underline or "flourish" sits beneath the word CARPEGNA. This flourish includes a green hash mark and a red hash mark with a gap between them, which was originally described as "the Italian flag in green, white and red as a part of the stylized underline." The Applicant claimed the colors red, white, green, black, and gray as features of the mark and specified that the entire design sits on a white background.

The Examining Attorney issued a refusal under Section 2(b) of the Trademark Act, asserting that the mark included a simulation of the Italian flag. Following the refusal, the Applicant attempted to distance itself from this description, re-characterizing the element as a "flourish" with a "gap" in the middle. The Examining Attorney made the refusal final leading to this appeal.

Analysis

The Board began its analysis by citing the statutory mandate of Section 2(b), which requires the refusal of any mark that consists of or comprises the flag of any foreign nation or any simulation thereof. The Board emphasized that the word "comprises" in the statute is synonymous with "includes," as established in In re Ala. Tourism Dep’t. Consequently, if a mark includes a flag or a simulation of one, it cannot be registered on the Principal Register. The Board defined "simulation" according to its generally understood meaning: something that gives the appearance or effect or possesses the characteristics of the original item.

Visual Comparison and Consumer Perception

The Board conducted a visual comparison between the actual Italian flag and the matter included in the Applicant’s mark. The Italian flag is a rectangular symbol featuring three equal-width vertical parallel stripes of green, white, and red. The Applicant’s mark contains green, white, and red parallel stripes arrayed in a nearly vertical fashion. While the Applicant argued the shape was not a rectangle, the Board observed that it appeared as a tilted rectangle.

The Board concluded that consumers would perceive the matter as the Italian flag or a close simulation. In reaching this conclusion, the Board noted that the comparison must focus on the perception of relevant consumers. Because the goods are "Prosciutto from the Carpegna region of Italy," the Board reasoned that consumers are already predisposed to viewing the mark through an "Italian lens." This context increases the likelihood that the colors green, white, and red, arranged in that specific order and shape, would be recognized as the national flag of Italy.

The Irrelevance of Dominant Elements

The Applicant raised several arguments to counter the perception of the flag. First, the Applicant argued that the mark is dominated by the literal elements PROSCIUTTO and CARPEGNA, suggesting the flag elements were too minor to warrant a refusal. The Board rejected this argument entirely, stating that the "dominance" of other elements is irrelevant to a Section 2(b) analysis. While a DuPont analysis for likelihood of confusion under Section 2(d) frequently examines dominant versus subordinate elements to determine the overall commercial impression, Section 2(b) is a different inquiry. The Board stated, "We’re determining whether the mark includes a flag, or a simulation of a flag. Period." Unless the symbol is so small or obscured that a consumer would not notice it, its size relative to other elements does not matter.

The "Gap" and Background Color Arguments

The Applicant further argued that the design lacked a border and that the middle section was merely a "gap," not a white stripe. The Board found this unpersuasive. It pointed out that the Applicant’s own amended description stated the mark was portrayed "all on a white background." Therefore, the "gap" between the green and red stripes is filled by the white of the background, creating the appearance of the three vertical stripes of the Italian flag. The Board noted that the flag might be even easier to see against a gray or black background, but its appearance against white still successfully simulates the Italian flag. The Board also noted the Applicant's own original description, which explicitly identified the element as the Italian flag, served as evidence of how the mark is perceived.

The Statutory Interpretation and Color Combinations

The Applicant argued that because many national flags use the same color combinations (green and red, or green, white, and red), a design cannot function as a simulation of a "single" foreign nation’s flag. The Board "emphatically rejected" this argument. It ruled that the statutory language of Section 2(b) leaves no room for such an interpretation. If the Board accepted the idea that common colors rendered a flag simulation unregistrable only if those colors were unique to one nation, the exception would "swallow the statute" because so many nations share color schemes (such as red, white, and blue).

TMEP Guidelines and the "Design Fill" Exception

Finally, the Applicant relied on TMEP Section 1204.01(b), which states that stylized flag designs are not refused when the flag design is used to form a letter, number, or design. The Applicant contended that the colored hashes formed part of the "flourish" design. The Board clarified that the TMEP guideline does not say "as part of a design," but rather "to form" a design.

The Board analyzed the examples provided in the TMEP to illustrate the difference. Acceptable marks include those where flag elements are used as a "fill" for the shape or in thick lettering.

In these instances, the flag elements do not appear in their entirety as a flag shape; they are merely the texture inside another shape.

In contrast, the Applicant’s mark features the green, white, and red colors as a discrete quadrilateral that breaks up the black flourish. The Board found this was not a "fill" but a discrete flag-like shape. The Board likened the Applicant’s mark to the following example showing an unacceptable mark:

Board’s Decision

The Board affirmed the refusal to register the mark under Section 2(b) of the Trademark Act. The Board held that the Examining Attorney correctly identified that the mark comprises a simulation of the Italian flag.

Do you think if the Applicant did not initially describe its mark as containing an Italian flag, it would have made a difference?