Official, municipal and trademarkable

A long time ago I asked this question about the aggressive IP — or quasi-IP — enforcement policy of New York’s Metropolitan Transit Authority:

[T]he libertarians remind us constantly, and accurately, that when something is everyone’s property, it is ultimately treated like no one’s property at all — which “everyone” ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

Since then I have twisted and turned on this issue, and above all concluded that the MTA’s policies were more opportunistic and inconsistent than anything else.

John Welch raises a related issue, reporting a decision at the Trademark Trial and Appeal Board:

 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 . . .  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.”

So that would seem to neatly cover my train insignia question, though, as I have pointed out in other posts, the MTA has arguably seriously undercut any claim it may have with respect to their exclusive use as identifiers of specific transit services by indiscriminate licensing.  That’s what makes this part of John’s post about the decision interesting:

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.

An interesting issue.

Originally posted 2012-07-23 14:01:30. Republished by Blog Post Promoter