By: Caroline B. Ahn
May a government entity register its own flag, coat of arms, or other insignia as a trademark or a service mark under the U.S. Trademark Act? In its first two precendential decisions of 2012, the Trademark Trial and Appeal Board (TTAB) addressed two such issues of first impression with respect to 2 applications. In both cases, the TTAB affirmed the Examining Attorneys’ decisions to refuse registration of a mark comprising the official seal of the District of Columbia, in In re The Government of the District of Columbia, Serial No. 77643857 (T.T.A.B. January 18, 2012), and a mark including a governmental insignia of the City of Houston, in In re City of Houston, Serial No. 77660948 (T.T.A.B. January 18, 2012).
The basis for the refusal lies in Section 2(b) of the Trademark Act, which prohibits the registration of a 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 simulation thereof.” Lanham Act § 2(b), 15 U.S.C. § 1052(b).
With respect to In re The Government of the District of Columbia, the District of Columbia sought to register a mark comprising its official seal for various goods, including clocks, cufflinks, desk sets, cups and mugs, and clothing. The Trademark Examining Attorney refused registration stating that the Section 2(b) of the Trademark Act prohibits the registration of official insignia, even by the relevant governmental entity. The Applicant, however, argued that the statute should be interpreted such that an exception would be made for governmental entities seeking to register their own insignia. In support, the Applicant relied on its theory of what the Congress intended, as well as referencing the prior version of the Trademark Act, the Paris Convention, and trademark statutes of other countries. Much like the Examining Attorney, however, the Board was not persuaded by the Applicant’s arguments. The Board first looked to the language of the statute, which it deemed to be “plain and clear on its face.” Simply, the Board stated that “[t]he text of the statute offers no exception to the prohibition on registration, even when a governmental entity applies to register its own official insignia.” Despite Applicant’s various, creative arguments, the Board affirmed the refusal.
Similarly, with respect to In re City of Houston, the City of Houston, Texas, sought to register a mark including the City’s governmental insignia for various municipal services. The Examining Attorney for this application also refused the registration on the basis that Section 2(b) of the Trademark Act prohibits such registrations. The Applicant here argued that the statute “is silent on the issue of whether or not countries, states, or municipalities may register their own insignia.” While the Board noted that the Section 2(b) does not answer the Applicant’s narrow question, the statute clearly sets forth that all applied-for marks consisting or comprising “the flag or coat of arms or other insignia of … any… municipality” must be refused registration. The Applicant further attempted to carve a particular exception to overcome the refusal by asserting that the City was not seeking to register its City Seal as an “emblem of authority” but rather in connection with specific municipal services. According to the Applicant, the use of the insignia to merely identify service or facility of the Government does not fall within the general prohibitions of the statute. The Board rejected this argument, stating that “the nature and status of the applied-for mark… invokes the prohibition of § 2(b),” and that the identified goods or services in application is not a factor in determining whether § 2(b) of the Act prohibits the registration of official insignia. Further, as the Applicant clearly admitted throughout the examination period that the mark sought to be registered is the City’s official seal, the Board needed not look to the Applicant’s actual use or other evidence of whether or not the City had adopted the mark as an official emblem of authority. “Once the status of the mark as an official insignia is established, it does not matter what else the mark may be used for, and Trademark Act § 2(b) cannot be avoided simply by limiting the application to certain goods or services.” Lastly, even if other cities had been allowed to register their city seals, as the Applicant argued, the Board refused to register the City of Houston’s applied-for mark. The Board justified its position, referencing the well-settled point that the Board is “not bound by the decisions of examining attorneys, nor do applicants have a substantive right to consistency.” The Board again refused to write in an exception into the statute and affirmed the refusal for registration.
With these two orders, the Board made it clear that no one - not even the corresponding governmental entity or municipality – can register any mark consisting or comprising a governmental or official insignia, under Section 2(b) of the Lanham Act.