Signed, sealed and delivered

That just about seals it for puns of this nature:  As John Welch informs us, the Federal Circuit has affirmed the decision by the TTAB to reject the applications by the city of Houston and the District of Columbia to obtain trademark registrations for their official seals, a case first discussed here in July of 2012.

The money quote, per John:

Section 2(b) prohibits an “applicant” from registering a 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.” These two cases raised a question of first impression: whether a local government entity may obtain a federal trademark registration for its official insignia. . . .

Houston:  The City of Houston argued that because it was seeking to register its own seal, it was not an “applicant” and Section 2(b) prohibition was inapplicable. . . . The CAFC noted that there is a “strong presumption that the plain language of the statute expresses congressional intent [which] is rebutted only in rare and exceptional circumstances.” United States v. Clintwood Elkhorn Mining Co., 553 U.S. 1, 11 (2008). It found nothing in the “plain language” of the statute that suggests an exemption for a governmental entity like Houston. . . .

District of Columbia: The District took a very different approach, asserting that to deny it registration for its seal would violate the obligations of the United States under the Paris Convention. It contended that the meaning of Section 2(b) is not clear, but is ambiguous on this point. This issue of ambiguity was relevant to whether the legislative history of the Lanham Act and the Paris Convention may properly be considered.

The court, however, found no ambiguity in Section 2(b).

U.S. appellate courts, it appears, aren’t ready to rewrite the Lanham Act based on treaty obligations or overseas legal standards just yet.

While there have been government seal disputes before, such as this one involving the Presidential seal and this one involving the FBI seal, these, as I have said in these earlier posts, come a different way.

UPDATE:  Oh, boy.  Looks like this stuff is going to get worse before it gets better — now the NSA and the DHS are getting into the circus act!  That is, it seems to involve efforts by municipalities and agencies to cash in on the supposed value of “their” supposed intellectual property by making everything and anything about them amenable to licensing.  (I couldn’t stick another “supposed” in front of “their” so I used the scare quotes.)

It’s not really so unreasonable for them to do so, from a management and fiscal point of view.  I like licensing revenue more than I like taxes.  That’s assuming, however, the answer to an arguably open question — namely that the licensing program is defensible even under the admittedly broad approach now embodied in
§ 43(a) of the Lanham Act, i.e., protecting “affiliation, connection, sponsorship, association, and/or approval.”  

I’ve argued, of course, that this approach has, to say the least, under cut any meaningful tie between the trademark owner and the stuff being licensed, unless you count the tautological right of being able to claim your junk is the “only officially licensed” junk.   Of course, such a program must be premised on a bona fide right, which the court has found to be absent here in the case of municipalities seeking to register their seals as trademarks.   Keep in mind that § 43(a), which that language comes from, deals with the right to sue for false designations or origin, not the right to register a trademark; indeed, it is the pretty much understood by practitioners as the “unregistered trademark federal trademark enforcement act.”  (You can use it for registered marks too, of course, and we always do.)

All this assumes that cost-benefit analysis indicates that the cost of an enforcement program, much less its externalities, would be justified by such a revenue flow.  Are people lining for official merchandise bearing City of Washington insignia?  That’s pretty hard to believe.  So what’s the real engine of this legal activity?

Answer:  Municipal lawyers looking for something to do.  They’re no different from us in that way.  I don’t have to belabor the obvious way, however, in which they are different — we’re reminded every payday.  Seal you next week!


Ron Coleman

I write this blog.