In re City of Hous.

• Decision Date: 01 October 2013
• Docket Number: 2012–1418.,Nos. 2012–1356,s. 2012–1356
• Citation: 731 F.3d 1326
• Parties: In re CITY OF HOUSTON. In re the Government of the District of Columbia.
• Court: U.S. Court of Appeals — Federal Circuit

731 F.3d 1326

In re CITY OF HOUSTON.

In re the Government of the District of Columbia.

Nos. 2012–1356, 2012–1418.

United States Court of Appeals,Federal Circuit.

Oct. 1, 2013.

Mark G. Chretien, Greenberg Traurig, LLP, of Houston, TX, argued for appellant in No.2012–1356. With him on the brief were Ben D. Tobor and Anthony F. Matheny.

Bingham B. Leverich, Covington & Burling, LLP, of Washington, DC, argued for appellant in No.2012–1418. With him on the brief were Hope Hamilton, Peter D. Trooboff and Marie A. Lavalleye.

Christina Hieber, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for all appellees. With her on the brief were Thomas L. Casagrande, Associate Solicitor; and Amy P. Cotton, Senior Counsel Office of Policy and External Affairs. Of counsel was Nathan K. Kelley, Deputy Solicitor.

Before LOURIE and PLAGER, Circuit Judges, and BENSON ^*, District Judge.

PLAGER, Circuit Judge.

This is a combined opinion in two cases on appeal from the Director of the United States Patent and Trademark Office (hereafter Director or PTO). Both cases raise a question of first impression—under the provisions of the Lanham Act, may a local government entity obtain a federal trademark registration for the entity's official insignia. The “Lanham Act” is the commonly used name for the Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq., and references to the Act in this opinion will use that common name and section designators. We use the term “official insignia” as a short-hand reference to the various types of insignia listed in the relevant provision of the Lanham Act; the specific piece of insignia for which registration is sought in both cases is the government entity's official seal.

The City of Houston (Houston) appeals from a final decision of the Trademark Trial and Appeal Board (the Board) on behalf of the Director that concludes that § 2(b) of the Lanham Act ( see15 U.S.C. § 1052(b)) prohibits Houston from registering its city seal on the federal register. The Government of the District of Columbia (the District) separately appeals from a similar final decision of the Board refusing to register the District's official seal on the basis of § 2(b).

We address Houston's and the District's appeals together as both require us to interpret the same provision of the Lanham Act. We conclude that the Board correctly interpreted § 2(b) as prohibiting Houston and the District from registering their seals, and therefore affirm both of the Board's final decisions.

Background

Houston seeks to register its city seal, shown below, as a trademark in connection with various municipal and city services, including commerce, tourism, business administration, and public utility services.

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To apply for federal registration, Houston filed Trademark Application Serial No. 77/660,948 with the U.S. Patent and Trademark Office (PTO) on February 1, 2009.

After reviewing Houston's application, the PTO's examining attorney refused to register Houston's seal in light of § 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.” 15 U.S.C. § 1052(b). Houston appealed the examining attorney's refusal to the Board.

In its appeal, Houston argued that because it was a government entity seeking to register its own seal, Houston did not fall under the prohibition of § 2(b). The Board disagreed, concluding that the prohibition of § 2(b) is clear and applies to Houston. As a result, the Board issued a final decision affirming the examining attorney's refusal to register Houston's seal. Houston appealed the Board's final decision to this court.

Like Houston, the District sought to register its official seal (shown below) on the federal register. The District filed Application Serial No. 77/643,857 to cover a variety of items, such as shirts, pens, cups, and hats.

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The examining attorney refused to register the District's seal due to the prohibition set forth in § 2(b). The District appealed the examining attorney's refusal to the Board and argued, inter alia, that the examining attorney's interpretation was inconsistent with the treaty obligations of the United States negotiated in the Paris Convention of 1883. After a remand to address the District's request to supplement the record, the Board issued a final decision affirming the examining attorney's refusal to register the District's mark.

The Board concluded that § 2(b) bars the District from registering its official seal. In the course of its opinion, the Board opined that nothing in the legislative history or the provisions of the Paris Convention highlighted by the District indicates that an alternative construction of § 2(b) is called for. The District appealed to this court.

We have jurisdiction over both appeals under 15 U.S.C. § 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).

Discussion

The Lanham Act in section 2 allows an applicant to register its mark on the principal register but only if the mark complies with the provisions of the Act:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registrationon the principal register on account of its nature unless it ...

This introductory authorization is followed by five specific exceptions, the second (subsection (b)) of which states:

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.

15 U.S.C. § 1052(b).

As noted, the present appeals raise an issue of first impression: whether § 2(b) of the Lanham Act bars a local government entity, such as Houston and the District, from registering its own insignia. Though both appellants argue in favor of their common position that § 2(b) does not bar such registrations, the appellants present quite different theories for that result.

The Board concluded that neither theory prevails, and that § 2(b) does prohibit registration of the appellants' seals. We review the Board's legal conclusions, including its interpretation of the Lanham Act, without deference. In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1365 (Fed.Cir.1999). We address each of the appellant's theories in turn.

A. City of Houston Appeal

Houston argues that it should be allowed to register its city seal because, as a government entity, it is not an “applicant” prohibited by § 2(b). To arrive at this construction of “applicant,” Houston refers to the definitions section provided in § 45 of the Act, 15 U.S.C. § 1127. This section defines “any ... word or term used to designate the applicant” as including a “juristic person,” which includes any “organization capable of suing and being sued in a court of law.” Id. Houston focuses on the section's introductory sentence, which states that the definitions apply “unless the contrary is plainly apparent from the context.” Id. Houston then argues that the context of § 2(b) suggests that Congress intended “applicant” to mean something different than a government entity seeking to register its own seal.

To establish context, Houston turns to policy arguments and the Lanham Act's legislative history. Houston argues that government entities use their official insignia to identify their goods and services, and unauthorized use of these insignia confuses the public about the government entities' approval of the goods or services. Houston also contends that the Board's construction of § 2(b) is at odds with the Lanham Act's goal of protecting the public from “pirates and cheats.” H.R.Rep. No. 79–219, at 2 (1945).

The Director of the PTO responds that § 2(b) unambiguously prohibits registration of governmental insignia. The Director argues that § 2(b) contains no exception for a government entity—in contrast to neighboring subsections which do contain exceptions—and § 2(b) focuses on the nature of the mark rather than the identity of the applicant. Therefore, according to the Director, Houston's identity as a government entity is irrelevant to the prohibition of § 2(b). For these reasons, the Director requests that we affirm the Board.

We begin our analysis with the language of the statute. Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985) (“Statutory construction must begin with the language employed by Congress and the assumption that the ordinary meaning of that language accurately expresses the legislative purpose.”). There is a “strong presumption that the plain language of the statute expresses congressional intent [which] is rebutted only in rare and exceptionalcircumstances.” United States v. Clintwood Elkhorn Mining Co., 553 U.S. 1, 11, 128 S.Ct. 1511, 170 L.Ed.2d 392 (2008) (internal citations omitted).

The prohibition of § 2(b) is clear. Section 2(b) prohibits registration of an “insignia of the United States, or of any State or municipality.” We see nothing in this plain language that suggests a government entity such as Houston should be exempted from the reach of the prohibition.

The definitions provided in § 45 only solidify our conclusion. Section 45 plainly contemplates a government entity being an “applicant.” Indeed, § 45 recites various government entities, including “the United States,” “any State,” and “any instrumentality of a State.” Id. A governmental entity such as Houston is clearly an “organization capable of suing and being sued in a court of law” within the meaning of the statute, and therefore Houston is an “applicant” to which the prohibition of § 2(b) applies.

The context of § 2(b) also supports the plain language. While Houston points to concerns about “pirates and cheats,” various provisions of the Lanham Act do not align with this as an exclusive or...