Addressing for the first time whether a city may obtain a federal trademark registration for a municipal seal, the U.S. Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s (TTAB) decision that such registration is barred by the plain language of Section 2(b) of the Lanham Act. In Re City of Houston, Case Nos. 12-1356, -1418 (Fed. Cir., Oct. 1, 2013) (Plager, J.).
Both the City of Houston and the District of Columbia separately sought to register their municipal seals as a trademark. At the Patent and Trademark Office (PTO), the examining attorneys denied both Houston and the DC’s applications due to the prohibition set forth in Section 2(b) of the Lanham Act. Section 2(b) prevents applicants from registering a proposed trademark 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.”
Houston and Washington, D.C., both appealed the examining attorney’s determination to the TTAB, which affirmed the examining attorneys’ rejections in each instances. Houston and D.C. separately appealed.
The Federal Circuit advancing different theories of why Section 2(b) does not bar registration of a municipal seal by a municipality. The Federal Circuit issued a combined opinion addressing the issues raised in each of these cases.
The City of Houston argued that it should be allowed to register its city seal because, as a government entity, it is not an “applicant” prohibited by Section 2(b). According to Houston, the context of Section 2(b) suggests that Congress intended “applicant to mean something different than a government entity seeking to register its own seal.
The Federal Circuit rejected this argument, finding that plain language of Section 2(b) prohibits registration of a municipality. The Court also noted that Section 2(b) stands in contrast to other subsections of Section 2, which have express exceptions to the prohibitions set forth in those subsections. The Federal Circuit also found unpersuasive Houston’s arguments the Board construction of “applicant” is at odds with the Lanham Act’s goal of protecting the public from “pirates and cheats,” pointing to prohibitions in Section 2(e) that also do not align with this objective.
The District of Columbia made an entirely different argument based on its contention that Congress intended the Lanham Act to implement and the treaty rights prescribed by the Paris Convention and that Section 2(b) must be construed to be consistent with the language of the Paris Convention to give effect to congressional intent.
As a threshold matter, the Federal Circuit held that the language of Section 2(b) was not ambiguous, and thus it would be improper to consider the proffered legislative history. However, even assuming that the Lanham Act was intended to implement the obligations of the Paris Convention, the Federal Circuit found nothing in the Paris Convention to justify a departure from the plain language of Section 2(b) and affirmed the TTAB’s decision.