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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
22 Jan 2019, Webinar, Washington, DC, United States

As part of Strafford Publications’ webinar series, Finnegan partners Shana Cyr and Mark Feldstein will provide essential updates on FDA practice and patent law relating to biologics and biosimilars.

27 Jan 2019, Other, Washington, DC, United States

Finnegan is a sponsor of the Association of Corporate Patent Counsel Winter Meeting. Finnegan partner Erika Arner will join the panel discussion “PTAB Review & Litigation.”

27 Jan 2019, Other, Florida, United States

Finnegan is a sponsor of the Association of Corporate Patent Counsel Winter Meeting. Finnegan partner Erika Arner will join the panel discussion “PTAB Review & Litigation.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions