Section 2(b) Precludes Municipalities from Registering Own Insignia as Trademarks: Federal Circuit | Practical Law

Section 2(b) Precludes Municipalities from Registering Own Insignia as Trademarks: Federal Circuit | Practical Law

On October 1, 2013, the US Court of Appeals for the Federal Circuit, in a combined opinion, affirmed the Trademark Trial and Appeal Board's (TTAB) decisions affirming refusals to allow Houston and the District of Columbia to register their official seals under Section 2(b)'s prohibition in the Lanham Act.

Section 2(b) Precludes Municipalities from Registering Own Insignia as Trademarks: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 04 Oct 2013 • USA (National/Federal)
On October 1, 2013, the US Court of Appeals for the Federal Circuit, in a combined opinion, affirmed the Trademark Trial and Appeal Board's (TTAB) decisions affirming refusals to allow Houston and the District of Columbia to register their official seals under Section 2(b)'s prohibition in the Lanham Act.
On October 1, 2013, the US Court of Appeals for the Federal Circuit issued a combined opinion in In re City of Houston, affirming two Trademark Trial and Appeal Board (TTAB) decisions affirming refusals to allow local government entities to register their own insignia as trademarks under the Lanham Act. The opinion combined appeals from the City of Houston and the Government of the District of Columbia (the District) because both required interpretation of Section 2(b) of the Lanham Act, which prohibits registering government insignia as a trademark. The issue on appeal was whether section 2(b) applies to government entities seeking to register their own official insignia.
Houston and the District each applied to register its own official seal as a trademark in the US Patent and Trademark Office (USPTO). In both cases, the examining attorney denied registration under section 2(b). Houston appealed to the TTAB, arguing that because it was a government entity seeking to register its own seal, it did not fall under section 2(b). The District also appealed, but on the grounds that the examining attorney's interpretation of section 2(b) was inconsistent with the US's treaty obligations under the Paris Convention. The TTAB disagreed with both arguments and issued final decisions affirming the examining attorneys' refusals to register the marks. Both Houston and the District appealed to the Federal Circuit. On appeal:
  • Houston argued that as a government entity it is not an applicant prohibited by section 2(b).
  • The District argued that refusing registration violates the US's obligations under the Paris Convention.
The Federal Circuit found that Houston is an applicant within the meaning of section 2(b) and, therefore, precluded from registering its official seal. In its appeal, Houston focused on the second sentence in the Lanham Act's definition of applicant, which states that the definition applies "unless the contrary is plainly apparent from the context," and argued that the context of section 2(b) suggests Congress did not intend "applicant" to mean a government seeking to register its own seal, because:
  • Unauthorized use of a government entity's official insignia confuses the public about whether the entity approves goods or services.
  • A different construction is inconsistent with the Lanham Act's goal of protecting the public from pirates and cheats.
The court rejected these arguments, finding that:
  • Section 2(b)'s prohibition is clear and its plain language does not suggest that a government entity should be exempted from its scope.
  • The definitions in section 45 of the Lanham Act plainly contemplate that government entities may be applicants. Section 45 lists various government entities. In addition, the section defines applicant to include "organizations capable of suing and being sued" and Houston is such an organization.
  • Section 2(b)'s context supports the plain language. The court noted that other Lanham Act bars to registration included specific exceptions, indicating that its drafters knew how to express an exception where warranted.
The court did not give weight to Houston's argument about pirates and cheats, finding that it is not an exclusive or primary policy objective of the Lanham Act.
The Federal Circuit similarly found that the District is an applicant within the meaning of section 2(b) and, therefore, precluded from registering its official seal.
The District argued that interpreting section 2(b) to preclude a municipality from registering its own insignia violates the US's Paris Convention obligations because relevant sections of the Paris Convention require member countries to register official insignia that are authorized by competent authorities in other member countries. The court rejected this argument, reasoning that:
  • The applicable Paris Convention provisions require registration of emblems of "countries of the Union" and that union, in this context, refers to the union of treaty members. The District is not a country of the union. Therefore, its seal is not an emblem of a country of the union.
  • These provisions apply to trademarks that are registered in the country of origin. Therefore, they are not applicable to whether the seal can be registered in the US, the country of origin.
Court document: