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Here’s What Happened:
In 1917, as part of the US’ WWI recruitment effort, James Montgomery designed the “Uncle Sam Wants You” character. With his long white hair and US flag inspired garb, Uncle Sam has become a symbol of US patriotism.
A German sporting goods retailer, Uncle Sam GmbH, applied for an International Registration, designating the US*, to protect its Uncle Sam logo (top picture) for, toys, food, bakery goods and beer. The USPTO refused to register the trademark. Uncle Sam GmbH appealed against this refusal to the Trademark Trial and Appeal Board.
Uncle Sam GmbH argued that its use of the image was consistent with a long history of the image being used for advertising purposes. In a non-precedential opinion, the Board agreed that others have used the image for advertising purposes. But the Board distinguished the company’s use of the image. In this case, the Uncle Sam image alone could not serve as a trademark. The function of a trademark was to distinguish the origin of a product or service. As the image has been used so extensively to advertise various products and services, it had essentially become too generic a mark to be registrable.
Uncle Sam GmbH also argued, there are a number of US trademark registrations already in place for Uncle Sam, as well as other iconic characters, such as the Statue of Liberty and the Mona Lisa. The Board did not touch on this argument, however, as it had already refused the application on the grounds outlined above.
Uncle Sam GmbH registered a different version of the Uncle Sam image (the bottom picture). That registration is still in place.
WHY YOU SHOULD KNOW THIS: An iconic symbol can function as a trademark. As seen in the bottom image, even a small modicum of distinguishing components can elevate the generic symbol into a source, product or service identifier.
Have a safe and fun 4th of July.
* Under the Madrid Protocol, an applicant can seek international registration in member countries. The applicant has to apply first in a member country.
Cited Authority_:_ In re Uncle Sam GmbH, Serial No. 79187215.