Flags can get you in trouble when you apply to register a trademark. Many countries, including the United States and China, prohibit the registration of flags as trademarks. Are you planning to incorporate a flag or country name into your brand? If so, proceed with caution to avoid legal complications.
Section 2(b) of the U.S. Lanham Act (as the Trademark Act is commonly known) prohibits the registration of a trademark if it “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” For its part, Article 10(1)(7) of China’s Trademark Law bars the registration of trademarks “identical with or similar to the State name, national flag, national emblem or military flag … of a foreign country.”
Country names also present a potential pitfall. China’s Trademark Law explicitly bars their use as trademarks, together with “geographical names of administrative divisions at or above the county level or foreign geographical names known to the public.” The latter category includes U.S. states: See our China Law Blog post on this subject.
In the United States, registration of a country name as a trademark is possible. However, in certain instances the country name can make the trademark descriptive, which could lead the U.S. Patent and Trademark Office (USPTO) to reject it on descriptiveness grounds. While no one has attempted to register the trademark COLOMBIA COFFEE, such an application would likely fail.
In other cases, USPTO might require that the country name be disclaimed, as it did in the case of an application to register COLOMBIA CALIENTE. A trademark disclaimer is a statement in a trademark application indicating that the applicant does not claim exclusive rights to certain descriptive, generic, or non-distinctive elements of the mark. Here, the trademark owner clarified that they were not claiming exclusive rights to “COLOMBIA”.
It is worth pointing out that the COLOMBIA CALIENTE trademark is used in connection with restaurant, bar, and bakery services. If it was used in connection to heaters, then the disclaimer might be insufficient, since “CALIENTE” could still be considered a descriptive term. In fact, USPTO initially refused the application on the grounds that “CALIENTE” was descriptive in connection to the trademark owner’s services. The applicant, however, was able to successfully argue that “CALIENTE” was not in fact descriptive.
On a related note, brands seeking to do business in China should be mindful that the China National Intellectual Property Administration (CNIPA) rarely, if ever, accepts disclaimers. A finding of descriptiveness will therefore invariably result in an irremediable refusal.
Final Thoughts
When incorporating flags or country names into a brand’s trademark, it’s critical to understand and navigate the legal restrictions that exist across different jurisdictions. For example, both the United States and China strictly prohibit using flags as trademarks and impose additional restrictions on country names and geographic terms. While creative designs or strategic disclaimers may offer workarounds in some cases, these elements often trigger closer scrutiny and potential refusals from trademark authorities.
You therefore should seek legal guidance to ensure that your trademarks are both compliant and protectable across all of your markets.
