In Issue of First Impression, TTAB Says Governments May Not Register Own Seals

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By Tamlin H. Bason  

The Trademark Act's prohibition on the registration of a municipality's “flag or coat of arms or other insignia” applies evenhandedly both to third parties who seek to register the mark, and to the government entity itself, the Trademark Trial and Appeal Board said Jan. 18 when it issued two similar opinions (In re Government of the District of Columbia, T.T.A.B., No. 77643857, 1/18/12); (In re City of Houston, T.T.A.B., No. 77660948, 1/18/12).

In an issue of first impression, the board noted that the language of the Trademark Act unambiguously prevents the registration of “any simulation” of a government's insignia, and thus it was not necessary to examine the statutory history of the act in order to determine if an exception was intended that would allow governments to register their own emblems. Even if such a review were conducted, however, the board concluded that it was still apparent that Congress intended to preclude any registration of government insignia. As a result, the board affirmed refusals denying the city of Houston and the District of Columbia permission to register their respective seals.

Cities Sought Registration of Municipal Seals

In January 2009, the District of Columbia filed an application to register its official emblem for use on merchandise such as cufflinks, lapel pins, notepads, and clothing (No. 77643857). A month later, the city of Houston applied for a registration on its city seal, however Houston planned on using the mark for “municipal services” and not for economic purposes (No. 77660958).

Both registrations were rejected by their respective examining attorneys. In each case, the examining attorney determined that the registrations were contrary to Section 2(b) of the Trademark Act, 15 U.S.C. §1052(b), which prohibits registration of a any proposed mark that “[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.”

Both decisions were appealed, the cities arguing that Section 2(b) contains an inherent exception that allows a municipality leeway to register its own seal.

Issue of First Impression

In each of its tandem opinions, both of which were written by Administrative Trademark Judge David Mermelstein, the board noted that it had never before issued an opinion on whether Section 2(b) prohibits a government from registering its own seal as a trademark.

Houston's Flag Desecration Argument Fails

Houston urged the board to look at the origins of the Section 2(b), and in particular noted the political environment that existed when the first iteration of the Trademark Act was enacted in 1905. Section 5 of that act was substantially similar to Section 2(b) of the 1946 act in that it prohibited the registration of any mark that “[c]onsists of or comprises the flag or coat of arms or other insignia of the United States or any simulation thereof, or of any State or municipality or of any foreign nation.”

Though the language of both acts is similar, Houston encouraged the court to examine the political environment that informed the 1905 Act. In particular, Houston claimed the 1905 statute “was enacted to prevent desecration of the flag, coat of arms or related symbols by halting the registration of commercial trademarks that contained representations of these marks.” This being the purpose of the act, Houston argued:

The original statute was not intended to prevent the relevant states, countries, or municipalities from protecting their own insignia. Indeed, the purpose was the exact opposite, to protect the states, countries, or municipalities from having their insignia misappropriated or used for improper commercial purposed by private individuals or entities.

The board was not convinced. Even if this was the intent of the statute, the board noted, it did not follow that Congress desired to exempt governments from the effects of the statute. “Rather—assuming applicant's premise—it would appear that Congress instead opted to prevent commercial exploitation of such insignia by a complete ban on registration of any use of such individual in commerce,” the board said.

Trademark Act More Restrictive Than Paris Convention

The District of Columbia urged the board to look beyond the 1905 act to the International Convention for the Protection of Industrial Property of 1883, which is known as the Paris Convention. Article 6 of the Paris Convention allowed participants to refuse registration if the mark “is considered contrary to morals and to public order.”

A 1911 conference in Washington, D.C. resulted in an a slight revision of the Convention, and Article 6 was amended to state:

It is understood that the use of badges, insignia or public decorations which shall not have been authorized by competent powers, the use of official signs …, may be considered as contrary to public order.

However, marks, which contain, with the authorization of competent powers, the reproduction of badges, decorations or public insignia, shall not be considered as contrary to public order.

A later 1925 revision following a conference at The Hague resulted in the introduction of Article 6ter, which provides that countries can:

prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.

Thus, the District of Columbia pointed out that the current language of the Paris Convention does not require a country to refuse registration of a government seal if such registration is authorized. The board disagreed.

As an initial matter, the board pointed out that the language permitting the registration of government insignia—if authorized—did not appear in the Paris Convention until 1911, after the enactment of the 1905 Trademark Act.

However, Section 2(b) of the 1946 Trademark Act was drafted well after both the 1911 and the 1925 revisions. Thus, the board said, the fact that the 1946 Act also lacked any language that would allow a government to register its own seal demonstrated Congress's intent to adopt a more restrictive approach than was permitted by the Paris Convention.

Furthermore, the board noted that the Paris Convention does not require signatories to permit the registration of government insignia. Rather, the operative language only requires that registration be refused for government insignia that lack appropriate authorization. “Thus, the clear meaning of Trademark Act §2(b) is not inconsistent with the requirements of the Paris Convention, and does not violate U.S. treaty obligations.”

The board said that it was immaterial that other signature countries, including Canada and the United Kingdom, permit governments to register government seals where authorized. Both countries provide for such exceptions in domestic legislation. “Neither country's statute is evidence that the Paris Convention requires such an exception,” the board said, and neither statute supports the conclusion “that we should or could read the exception into the U.S. law contrary to our domestic legislation.”

Congress Did Not Provide Any Exceptions to 2(b)

If Congress had desired to carve out an exception permitting governments to register their own seals, it easily could have done so, the board said. In the District of Columbia case, the board pointed out that Congress, in fact, chose to carve out exceptions elsewhere in Section 2. For instance, Section 2(c), 15 U.S.C. §1052(c), prohibits the registration of a term that:

[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

Thus, the board pointed out that the general bar on the registration of a living individual's name allows for an exception where the individual gives written consent. The same is true when the widow of a deceased president provides written consent.

Similarly, Section 2(d), 15 U.S.C. 1052(d), which prevents the registration of a mark that is likely to cause confusion with another mark, only applies where the earlier mark is either already registered, or is being used “by another.” This too is a narrowing clause because, the board noted, “an applicant may register a mark notwithstanding that it is similar to its own registered or previously used marks.”

Comparing the exceptions found in Sections 2(c) and 2(d) with the absence of any narrowing language in Section 2(b) was compelling. “If there were any doubt on the question, these provisions demonstrate that Congress is fully capable of expressly exempting persons from the statutory prohibitions to registration when it intends to so,” the board said.

“Moreover,” the board added “neither the Trademark Act in general nor Section 2 in particular features an overly-complicated statutory structure; it seems unlikely that the absence of applicant's exception was an oversight or a drafting error.”

In its District of Columbia opinion, the board noted that its construction of Section 2(b) was consistent with the Patent and Trademark Office's own interpretation. In the Trademark Manual of Examining Procedures, the PTO states, “The statute does not list any exceptions that would allow for countries, states, or municipalities to register their own flags or insignia.” The TMEP goes on to instruct examining attorneys to refuse any application by a government that seeks registration of an official seal.

Mark's Intended Use Immaterial

Houston argued that a refusal of its application would be inconsistent with In re U.S. Department of the Interior, 142 USPQ 506 (T.T.A.B. 164), where the board allowed the Department of the Interior to register its insignia as a mark.

In finding Section 2(b) inapplicable, Department of the Interior said, “department insignia which are merely used to identify a service or facility of the Government are not insignia of national authority and that they therefore do not fall within the general prohibitions of this section of the Statute.”

Houston pointed out that it too wanted to register its seal only in order to identify its municipal services. Specifically, Houston sought registration under International Class 35 for “city administrative services,” and under International Class 39 for “public utility services.” Houston thus argued that it fit under the exception recognized in Department of the Interior.

But the board said that Houston misinterpreted Department of the Interior. In that case, the board did indeed look at the services that were to be offered under the mark, but it did so only to inform its determination on whether the applied for mark was akin to “the flag or coat of arms … of the United States.” Noting that the presidential seal, the flag, and official department emblems were denied registration, Department of the Interior, in dicta, suggested that seals that were only used to identify services may not be prohibited by Section 2(b). The board, in its Houston opinion, said that although the intended uses of a mark may be of assistance in determining whether the mark is an official government emblem, “once it is determined that the applied-for mark is the official insignia of ‘the United States, … any state or municipality, or of any foreign nation,' its registration is prohibited, regardless of the specific goods or services for which registration is sought.”

Houston readily admitted that the mark it sought registration of was its official seal. Therefore, the registration was clearly prohibited by Section 2(b), the board held.

Inconsistent Registrations

Houston alleged that 13 other cities have been permitted to register their city seals. The District of Columbia said that 14 cities have received registration for their city seals. However, the board did not consider those registrations because they were not properly made part of the record.

Even the registrations that were submitted were of little probative value, the board determined. First, Houston's evidence only revealed the marks and the registration numbers of the alleged inconsistent registrations. The board called this evidence “incomplete,” noting “there is no evidence in the record that the listed registrations are, in fact, the official seal of the cities mentioned in the marks.”

But even if the registrations are inconsistent, that is of no bearing because this is an issue of first impression, the board said. It said that it was not bound by the decisions of PTO examining attorneys. This is particularly true when the decision requires a legal determination about whether Section 2(b) prohibits a government from registering its own seal. The board said, “[O]ur obligation is to make such a decision correctly, and we may not abdicate that responsibility to examining attorneys who made determinations in earlier applications.”

The board went on to conclude that Section 2(b) does in fact prohibit governments from registering their own seals. Accordingly, the board affirmed both refusals to register the applied for marks.

Administrative Trademark Judges Karen Kuhlke and Peter W. Cataldo joined both opinions.

The District of Columbia was represented by Bingham B. Leverich of Covington & Burling, Washington, D.C. The city of Houston was represented by Mark G. Chretien of Greenberg Traurig, Houston.

For More Information

Houston opinion at http://pub.bna.com/ptcj/77660948Jan1811.pdf

Washington, D.C. opinion at http://pub.bna.com/ptcj/77643857Jan.1811.pdf