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...