Federal Circuit affirms TTAB decisions on registrability of official seals

United States of America

In a combined opinion (In re City of Houston (2012-1356) and In re The Government of the District of Columbia (2012-1418), the US Court of Appeals for the Federal Circuit, in a case of first impression, has unanimously affirmed the separate decisions (see here and here) of the Trademark Trial and Appeal Board (TTAB) upholding the US Patent and Trademark Office’s refusal of the City of Houston’s and the District of Columbia’s applications, which each sought to register the government entity’s official seal as a trademark in connection with various governmental services and merchandise. The Federal Circuit’s rejection was based on its reading of §2(b) of the Lanham Act (15 USC §1052(b)), which the court interpreted as barring local government entities, such as the City of Houston and the District of Columbia, from registering their own official insignia on the Principal Register. 

Section 2(b) provides that a trademark may not be registered if it “[c]onsists 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”. Although both the City of Houston and the District of Columbia similarly argued that the statute did not forbid trademark registration of official insignia, the two parties presented very different theories to defend their positions.

The City of Houston contended that registering the city’s seal was permissible under §2(b) because the City of Houston, as a government entity, was not an 'applicant' prohibited by the statute. An 'applicant' under §45 of the Lanham Act is defined as a 'juristic person' including any “organisation capable of suing and being sued in a court of law” (see 15 USC §1127). The statute further states that the provided definitions apply “unless the contrary is plainly apparent from the context”. 

The City of Houston offered that the 'context' of § 2(b) supported a ruling in favour of its trademark application, explaining that public policy considerations underlying the Lanham Act were aimed at allowing government entities, like the City of Houston, to use their official seals to identify their goods and services.  The City of Houston further stated that "unauthorised use of these insignia confuses the public about the government entities approval of the goods and services”. Forbidding the city’s registration therefore conflicted with the Lanham Act’s goal of warding off “pirates and cheats”.

The Federal Circuit found the City of Houston’s arguments unpersuasive and affirmed the TTAB’s ruling.  Driving the court’s analysis was the principle that the plain language of a statute is indicative of legislative intent. According to the opinion, the plain language of §2(b) clearly does not show any congressional intent to exempt the City of Houston from the prohibition against trademarking a government entity’s official seal.  After establishing this point, the panel subsequently rejected the City of Houston’s argument that it did not meet the statutory definition of 'applicant', stating that §45 “plainly contemplates a government entity being an applicant” (internal citations omitted). Regarding the public policy issues raised by the City of Houston, the judges noted that there were other ways for the City of Houston to protect its citizens from “pirates and cheats” trying to deceive the public through unauthorised use of the city’s insignia. The court concluded this portion of its opinion by stating that, if the City of Houston was dissatisfied with the protections afforded under the Lanham Act, then it should bring those grievances before the legislature and not the courts.

Presenting a different argument, the District of Columbia referred to the legislative histories of the Lanham Act and the Paris Convention to make its case. Prior to addressing the merits of its position, though, the Federal Circuit noted that the District of Columbia’s “arguments are interwoven in ways that make them somewhat difficult to separate”.  

For example, the District of Columbia contended that Congress’s intent in drafting the Lanham Act was to implement the treaty rights of the Paris Convention. In order to properly construe §2(b) and carry out the proffered legislative intent, the District of Columbia argued that a consistent reading of the statute and the Paris Convention was required.  

Striking down this line of reasoning, the Federal Circuit reiterated that §2(b) was clear on its face and was therefore not subject to interpretation. Hence, the justices found no reason to disturb the statute’s plain language, which prohibited the registering of a government entity’s official seal.

Finally, the Federal Circuit addressed the District of Columbia’s argument that prohibiting registration of its official insignia under §2(b) was a violation of the rule established in Murray v Schooner Charming Betsy (6 US 64, 118 (1804)) (holding that “an act of Congress ought never to be construed to violate the law of nations, if any other possible construction remains”). Since the Paris Convention allows “other countries of the Union” to register trademarks duly registered in the country of origin, the District of Columbia urged that prohibiting its registration under §2(b) violates the US treaty obligation, because it prevents everyone from registering its insignia in the United States. For the court, this argument “d[id] not hold water on either side of the continent”. Rejecting the District of Columbia’s position, the court ruled that the term 'Union' referred to the countries joined in the treaty and did not apply to government entities like the District of Columbia. Thus, the Federal Circuit found no violation of the rule in Charming Betsy and affirmed the TTAB’s decision to reject the District of Columbia’s trademark application under §2(b). 

Absent any congressional amendments to §2(b) of the Lanham Act, the Federal Circuit’s decision in this case will likely be the final word on whether a state, government entity or municipality may seek trademark protection on the Principal Register. While obtaining a trademark registration may not be an option under the present standard, practitioners should be mindful that there are still remedies available under §43(a) of the Lanham Act, which authorises, among other things, suits for infringement of unregistered trademarks, to address illegal use of a government entity’s official insignia.

Brooke Hazan and Howard J Shire, Kenyon & Kenyon LLP, New York

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