United States: Local Governments Are Prohibited From Registering Official Insignias As Trademarks

In In re City of Houston, No. 12-1356 (Fed. Cir. Oct. 1, 2013), and In re Government of the District of Columbia, No. 12-1418 (Fed. Cir. Oct. 1, 2013), the Federal Circuit held that a local government entity cannot obtain a trademark for its official insignia.

Both the City of Houston ("Houston") and the Government of the District of Columbia ("the District") filed trademark applications attempting to register their respective official local government entity insignias, or more specifically, their official seals. The PTO examining attorneys refused to grant the applications in light of § 2(b) of the Lanham Act, 15 U.S.C. § 1052(b). Both governing entities appealed the denials.

On appeal to the TTAB, Houston argued that "because it was a government entity seeking to register its own seal," the provision did not apply. Slip op. at 4. The TTAB disagreed, concluding that the prohibition of § 2(b) was clear and applied to Houston. The District, on its appeal to the TTAB, argued that "the examining attorney's interpretation was inconsistent with the treaty obligations of the United States negotiated in the Paris Convention of 1883." Id. In its decision, the TTAB stated that "nothing in the legislative history or the provisions of the Paris Convention highlighted by the District indicate[d] that an alternative construction of § 2(b) [was] called for." Id. at 5.

"The prohibition of § 2(b) is clear. Section 2(b) prohibits registration of an 'insignia of the United States, or of any State or municipality.' We see nothing in this plain language that suggests a government entity such as Houston should be exempted from the reach of the prohibition." Slip op. at 7 (quoting 15 U.S.C. § 1052(b)).

On appeal to the Federal Circuit, Houston renewed its argument that the provision did not apply to a government entity attempting to register its own seal. Specifically, it argued that, "as a government entity, it is not an 'applicant' prohibited by § 2(b)." Id. at 6. Houston reasoned that the introductory sentence of § 45 of the Lanham Act, 15 U.S.C. § 1127, which states that the definitions in that section apply unless the contrary is plainly apparent from the context, indicates that the definition of "applicant" does not include government entities seeking to register their own marks. Houston's theory was that "government entities use their official insignia to identify their goods and services, and unauthorized use of these insignia confuses the public." Id. The PTO responded that "§ 2(b) unambiguously prohibits registration of governmental insignia," and "§ 2(b) contains no exception for a government entity." Id. at 6-7.

The Court agreed with the PTO, holding that there was "nothing in [the] plain language that suggest[ed] a government entity such as Houston should be exempted from the reach of the prohibition." Id. at 7. Likewise, the Court found that the definitional section, § 45, clearly contemplated a government entity as being an "applicant" because it explicitly recites several government entities, such as the "United States" "any State," and "any instrumentality of a State." Id. (quoting 15 U.S.C. § 1127). Further, the Court found that the context of the statute also supported the plain language interpretation, because the various provisions of § 2 of the Lanham Act did not align with Houston's alleged policy to "protect the public from 'pirates and cheats.'" Id. at 8. Therefore, the Court held that the plain language of § 2(b) prohibited Houston from registering its insignia.

The District, on appeal to the Federal Circuit, argued that § 2(b) should be construed according to the legislative history and consistently "with the language of the Paris Convention to give effect to Congressional intent." Id. at 9. The PTO contended that legislative history need not be considered because the meaning of § 2(b) is plain on its face. The Court acknowledged that legislative history can be used in interpreting a statute to explore the statutory context of an enactment, but that certain types of legislative history, "such as the individual statements on the floor of the legislature by key legislators in favor of or opposed to the legislation, or language in committee reports that purports to explain legislative intent," is only admissible when a statute is deemed ambiguous, and that, absent this ambiguity, the plain meaning of a statute cannot be varied by such legislative history. Id. at 11. The Court agreed with the PTO that § 2(b) is unambiguous, and, therefore, while the Court did not preclude an examination of legislative context, it would not be proper to consider the proffered legislative history.

In terms of legislative context, the District then argued that the denial of the District's trademark registration is a violation of the rule in Murray v. Schooner Charming Betsy, 6 U.S. 64 (1804), that "an act of congress ought never to be construed to violate the law of nations, if any other possible construction remains." Slip op. at 12 (quoting Charming Betsy, 6 U.S. at 118). The District contended that the TTAB's interpretation violated the United States's treaty obligation under the Paris Convention because "it prohibits everyone, including a municipality in a foreign member country, from registering its insignia in the United States." Id. at 13. The District further argued that the Paris Convention requires member countries to register as trademarks official insignia that are authorized by competent authorities in other member countries, and that the TTAB's decision prohibits everyone, including a municipality in a foreign member country, from registering its insignia in the United States.

The Court held that the provision of the Paris Convention relied upon by the District only applies to "emblems of countries, not emblems of local public bodies such as municipalities." Id. at 14. Therefore, this provision did not apply to the District because it is a municipality of the United States, and not a country within the definition of the Paris Convention. Further, the Court found that the provision applies only to trademarks that are "duly registered in the country of origin," and because the District's seal was not duly registered in the United States, its country of origin, this provision did not apply. Id. at 15.

Accordingly, the Federal Circuit affirmed the TTAB's final decisions with regard to both Houston and the District, and held that local governments are prohibited under § 2(b) of the Lanham Act from registering their official insignias as trademarks.

Judges: Lourie, Plager (author), Benson (sitting by designation)

[Appealed from TTAB]

This article previously appeared in Last Month at the Federal Circuit, November 2013.

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