Monday, January 30, 2012

Precedential Nos. 1 and 2: TTAB Rules that Section 2(b) Bars Registration of a Government Entity's Own Official Insignia

Facing an issue of first impression in two separate cases, the Board, in well-reasoned decisions, affirmed the PTO's refusals to register the two design marks shown below on the ground that each mark comprises a governmental insignia that is barred from registration by Section 2(b) of the Trademark Act.

In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012) [precedential]. The Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.

Section 2(b) prohibits registration of any mark that “consists 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.” Here there was no dispute that the applied for mark was the official seal, nor that the District of Columbia qualifies as a “municipality” under the statute.

The Board found the language of Section 2(b) to be “plain and clear on its face.” The text of the statute provides for no exception to the ban on registration, even when a governmental entity is the applicant.

Applicant argued that, based on Congressional intent, Section 2(b) should be interpreted to include an exception for governmental entities seeking to register their own insignia. But the Board noted that such an exception is absent from the statutory text, and it refused to presume that Congress intended such an exception. The Board observed that Section 2(c) and 2(d) contain express exceptions like that which Applicant proposes. These provisions clearly show that Congress is fully capable of providing statutory exceptions when it intends to do so. Moreover, Congress has revisited the trademark law numerous times in the 100 years since the prohibition against registering governmental indicia was first enacted, and it has not provided the proposed exception. Consequently, the Board found it hard to believe that Congress intended this governmental exception but failed to expressly provide it.

Applicant contended that this prohibition was originally enacted with the intent of implementing the Paris Convention, which aims to prohibit others from registering government indicia, not governments themselves. The Board, however, pointed out that this prohibition was first enacted into United States trademark law in 1905. Although the Paris Convention currently does not require that signatories to the Convention prohibit registration of official insignia when authorized by the relevant government body, prior to 1911 there was no mention of a “registration with authorization” exception. This suggests that prior to 1911, the Convention's ban on such registrations was to be applied to all such marks, regardless of authorization or the identity of the applicant. Thus it might be presumed that in 1905 Congress intended to adopt the more restrictive approach of the 1883 text of the treaty that was then in effect.

The fact that Section 6ter of the current Paris Convention does not require the United States to bar registration of all governmental insignia is of no help to Applicant because the Paris Convention is not self executing. It creates no rights that Applicant can directly rely on. Even if it were self-executing, the Convention requires only that signatories refuse registration without authorization. It does not require signatories to accept registration when authorized.

Applicant also argued that the central purpose of Section 2 of the Act is to prevent confusion, whereas registration of indicia by the pertinent governmental body would not result in confusion. But the Board easily knocked down that argument, pointing to the ban on immoral and scandalous marks found in Section 2(a) and the various provisions of Section 2(e), none of which relate to confusion. Likewise, Section 2(b) prohibits registration of marks regardless of whether confusion is involved.

Applicant next maintained that Section 2(b) is ambiguous, as evidenced by the PTO’s issuance of three third-party registrations for governmental insignia, as well as by the TTAB’s decision in In re U.S. Dep’t of the Interior, 142 USPQ 506 (TTAB 1964), where the Board reversed a refusal to register a logo of the National Park Service. The Board observed, however, that in the Interior case it concluded that the involved logo was not the type of mark prohibited by Section 2(b) because it was not an official insignia of national authority. In other words, Section 2(b) does not bar a government body from registration of any and all marks, just insignia "of the same class as the flag or coats of arms of the United States."

As to the third-party registrations, the actions of the Examining Attorneys in approving those applications did not create any ambiguity in the statute, nor do they provide Applicant with a right to register its mark. The Board pointed out that arguments based on alleged examining inconsistencies have been consistently rejected. Each mark must be reviewed on the record submitted with the application. “Simply put, the goal of consistency does not require that [the Board] ignore a statutory directive.”

Finally, Applicant argued that Section 2(b) is unconstitutional because it denies Applicant its Fifth Amendment right to due process, and further that the refusal of its application is unconstitutional because it discriminates against Applicant in view of the three third-party registrations of record. The Board disagreed on both counts, but more importantly observed that the TTAB is not an Article III court and has no authority to declare provisions of the Trademark Act unconstitutional.

The Board therefore affirmed the refusal to register.

In re City of Houston, 101 USPQ2d 1534 (TTAB 2012) [precedential]. Following its reasoning in the District of Columbia case, the Board affirmed a Section 2(b) refusal to register the official seal of the City of Houston for various municipal services.

Applicant Houston asserted that the statute is “silent” as to whether governmental entities may register their own official insignia, but the Board flatly disagreed. Section 2(b) categorically provides that all such insignia are barred from registration. It need not set forth or spell out every subset of marks that falls within the ban.

Applicant contended that Section 2(b) was enacted to prevent desecration of the flag and other government symbols by denying their registration, not to prevent government bodies from protecting their own insignia. The Board was unable to verify Applicant’s theory regarding enactment of Section 2(b), but even if it accepted Applicant’s premise, it does not necessarily follow that Congress intended that governments should be able to register their own indicia; rather it appears that Congress chose a complete ban on registration of such indicia in order to prevent their commercial exploitation. As pointed out in the District of Columbia decision, Congress could easily have provided an exception in Section 2(b), but it did not do so. Accordingly, the Board presumed that Congress intended Section 2(b) to apply universally, regardless of the identity of the applicant.

Relying on certain language in In re U.S. Dep’t of the Interior, Applicant urged that it sought registration of its seal not as a “symbol of authority,” but rather in connection with specific municipal services, and therefore its application falls outside the Section 2(b) bar. The Board, however, found that interpretation to be a misreading of Interior because that case does not support the contention that the nature of the involved goods or services is a factor in determining whether Section 2(b) prohibits registration.

The Board in Interior decided that the mark in question [shown above] was not of the type that falls within Section 2(b) because it was not similar in kind to the flag or Great Seal of the United States. In Interior, the Board discussed the nature of the services involved only in the context of determining whether the mark was in fact “the flag or coat of arms or other insignia” of the government.” If the mark is never used as an emblem of authority, but only to identify some service or program provided by a government agency [in Interior the mark was used in connection with recreational and educational services], the mark does not fall within Section 2(b). However, if it is determined that the mark does fall with the Section 2(b) prohibition, then the goods or services identified in the application to register are irrelevant. Here, the City of Houston’s seal is admittedly an official insignia under Section 2(b), and Applicant’s discussion of the particular services recited in its application is of no consequence .

Finally, Applicant pointed to the PTO’s inconsistent treatment of such marks, relying on a list of thirteen third-party registrations. The Board noted that the mere list was of little probative value because it was not even clear that the involved marks were official governmental insignia. In any event, even assuming that the listed registrations are inconsistent with the refusal to register in this case, reversal is not required. The Board is not bound by prior decisions of examining attorneys, nor do applicants have a substantive right to consistency. The Board must decide each case on the record before it.

The Board agreed with Applicant that legal determinations should be applied consistently, but the Board’s obligation is to make the decision correctly. This obligation may not be abdicated to examining attorneys. To the contrary, it is the Board’s role to correct the examining attorney who applies an incorrect legal standard when the case comes before the Board. Even if all of the listed registrations should have been refused registration, those errors do not require the PTO to improperly register Applicant’s mark.

The Board therefore affirmed this refusal to register.

Text Copyright John L. Welch 2012.


At 10:49 AM, Anonymous Erik Pelton said...

The City of Houston has filed an appeal of the Board's decision to the Court of Appeals of the Federal Circuit:


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