Can a Government Entity Trademark their Insignia?

Posted by on Oct 15, 2013

Today we look at an interesting case, In Re City of Houston, before the United States Court of Appeals for the Federal Circuit.  This case consolidated two cases, one brought by the city of Houston, Texas, and the other by the government of the District of Columbia, that asked the same basic question.  In both cases the local governmental entity sought federal trademark registration of their official insignia, e.g. their seal.

Background of the Cases

Both Houston and DC sought to trademark their seals as a moneymaking and merchandising endeavor.  The United States Patent and Trademark Office (“Trademark Office”) refused both registrations.  The reason cited by the examiner in both cases was section 2(b) of the Lanham Act.  This section in relevant part prohibits the federal trademark registration of the flag, coat of arms, or any other insignia of the United States, any state, any municipality, or foreign nation.

Houston argued that section 2(b) did not apply because it was not intended to apply to a governmental entity seeking to trademark its own insignia.  The TTAB (The Trademark Office’s internal appeals board) disagreed and stated that section 2(b) was clear and applied to any and all parties.

DC, after facing rejection, appealed to the TTAB on the grounds that the rejection was inconsistent with the treaty known as the Paris Convention of 1883 that the US is a signatory to.  The TTAB rejected this argument and reiterated that section 2(b) applied.  Both DC and Houston appealed to the Federal Circuit.

Analysis by the Federal Circuit

Houston’s argument was a semantic one over the meaning of ‘applicant’ as defined in section 45 of the Lanham Act.  The first sentence of the section states that the definitions of the section apply to the Act unless the context of another section clearly indicates a contrary result.  Thus Houston argues, the context of section 2(b) implies an exception for a governmental entity applicant versus all other applicants.  This was a weak argument that the Federal Circuit rejected quite handily.  Words in a law are given their ordinary and plain meaning except under exceptional circumstances.  Furthermore, section 45 clearly contained provisions that did contemplate government entities as applicants and what’s more, sections near 2(b) contained exceptions, but tellingly, 2(b) did not.  Thus the drafters of the Lanham Act clearly were capable of stating exceptions, but tellingly did not explicitly craft any for 2(b).

DC argued that the legislative history of the Lanham Act, coupled with the Paris Convention Treaty (PCT) compel the right to register official insignia.  The major problem with this argument was that legislative history (the debate and record surrounding the enactment by Congress of a law) is only available when a law is unclear or ambiguous.  Otherwise, the ‘plain meaning’ of the law controls the outcome.  As a threshold matter, the court ruled that 2(b) was unambiguous and thus DC’s argument failed.  The court, to kill the issue completely, then examined the PCT.  The PCT basically provides for reciprocity in trademark registration: what is registered by one member nation shall be recognized by all others.  However, the mutual recognition of trademarks requires under Article 6(5) that the trademark be validly registered in the country of origin!  Thus, DC’s argument was classic circular reasoning as the issue in this case was whether the registration of DC’s insignia was valid!

Commentary on Public Policy

Trademark law, in addition to protecting valuable marks in commerce, is also concerned with protecting the public.  One of these protections is the idea that words and language should not be unnecessarily restricted via trademark registration, hence the doctrines of descriptive and generic terms not being protectable absent special circumstances.  At the same time, the government is the property of the people.  Our government exists to serve the people, not the other way around, a subject of much concern after the Framers’ experience with the English monarchy.  Section 2(b), as written, clearly reflects the notion that government insignia belongs to the public and may not be restricted from the use of the public.  Such a protection shows foresight and wisdom.  It preserves the right of political commentary such as the use of insignia in political cartoons and satires.  It draws a clear line between for-profit commerce and a government that exists at the will and sufferance of its citizens.