In re Orange, 87419378
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board |
| Writing for the Court | Allard, Administrative Trademark Judge: |
| Parties | In re County of Orange |
| Docket Number | 87419378,87639750 |
| Decision Date | 04 August 2022 |
In re County of Orange
Nos. 87419378, 87639750
United States Patent and Trademark Office, Trademark Trial and Appeal Board
August 4, 2022
Hearing: February 24, 2022
Anna M. Vradenburgh and John Tehranian of One LLP, for County of Orange.
Nancy L. Clarke, Trademark Examining Attorney, Law Office 102 [1] Mitchell Front, Managing Attorney, and Christina Calloway, Trademark Examining Attorney, Law Office 122 [2] Kevin Mittler, Managing Attorney.
Before Shaw, Coggins, and Allard, Administrative Trademark Judges.
OPINION
Allard, Administrative Trademark Judge:
County of Orange ("Applicant") seeks registration on the Principal Register of the following mark (the "Circular Mark"):
for a wide range of services in seven classes, including:
• county government services, namely, providing information in the field of government affairs, in International Class 35
• maintaining parks, libraries, county offices, harbors and airports, namely, building maintenance, in International Class 37
• running and maintaining public services, namely providing transport and storage of waste, in International Class 39;
• county government services in the nature of education and entertainment services, such as, providing sport facilities and libraries, in International Class 41;
• environmental testing and inspection services, evaluation and testing of real estate for the presence of hazardous material, in International Class 42;
• providing public health care services, in International Class 44; and
• providing law enforcement services, namely, police and civil protection services, in International Class 45.[3]
Applicant also applied to register the mark shown below (the "Badge Mark"):
(Image Omitted)
for services in International Classes 35 and 41, which are similar to those identified in Classes 35 and 41 in the application to register the Circular Mark.[4] Notably, the Badge Mark incorporates the Circular Mark in its entirety.
With regard to the application to register the Circular Mark, the Trademark Examining Attorney refused registration of it under Trademark Act Section 2(b), 15 U.S.C. § 1052(b), because the mark consists of the insignia of a municipality.[5] The
refusal was subsequently withdrawn[6] but later reinstated[7] and made final.[8] When the refusal was made final, Applicant appealed and requested reconsideration.[9] After the Examining Attorney denied the request for reconsideration,[10] the appeal resumed.
With regard to the application to register the Badge Mark, the Examining Attorney refused registration of the mark under Section 2(b) of the Trademark Act, 15 U.S.C. § 1052(b).[11] Applicant argued against the refusal, which was then withdrawn, and a Notice of Publication issued.[12] However, the Examining Attorney subsequently requested that jurisdiction of the application be restored,[13] and the refusal to register under Section 2(b) was reinstated.[14] When the refusal was made final,[15] Applicant appealed and requested reconsideration.[16] After reconsideration was denied,[17] the appeal resumed.
The appeals are fully briefed. At Applicant's request, the appeals were consolidated prior to oral argument.[18] We now decide them in this single opinion, see In re Mr. Recipe, LLC, 118 U.S.P.Q.2d 1084, 1085 (TTAB 2016) (Board consolidated appeals in two applications on Examining Attorney's request and issued a single opinion), and affirm the refusals to register.
I. The Circular Mark of the '378 Application
Before addressing the merits, we first address an evidentiary matter.
A. Evidentiary Matter
Applicant attaches to its appeal brief a copy of a portion of the constitution of the State of California.[19] In her brief, the Examining Attorney does not object to the new evidence nor does she discuss it or otherwise treat it as being of record. Generally, under such circumstances, such evidence could be excluded from consideration. In re Pedersen, 109 U.S.P.Q.2d 1185, 1188 (TTAB 2013) (refusing to consider late-filed evidence submitted with appeal brief even though examining attorney did not explicitly object to the evidence, because examining attorney did not discuss it or otherwise treat it as being of record). However, in this instance, the evidence is not subject to reasonable dispute and therefore we may take judicial notice of it. Trademark Trial and Appeal Board Manual of Procedure § 704.12(a) (2022) and cases cited therein.
B. Background
The California Government Code states that a county may adopt a seal, but to do so requires the completion of a two-step process.[20] First, the seal must be adopted by the county Board of Supervisors and, second, "[a] description and impression of the seal shall be filed in the office of the county clerk."[21] Simply put, in order for a seal to become a county's official seal, "it must be adopted by the Board of Supervisors, and it must be filed with the county clerk."[22]
Applicant made of record evidence that it, County of Orange, California, created and adopted an "official" seal over a century ago.[23] The official seal generally consists of a single orange having a stem with three leaves, as shown in one of its color iterations below:[24]
(Image Omitted)
The image of a single orange having a stem with three leaves became "the emblem for all seals of Orange County," excepting the seal of the Superior Court, by motion at a meeting of the Board of Supervisors on August 5, 1889, and, according to the minutes of that meeting, the design was proposed and "carried unanimously".[25]
According to Cynthia J. Sandoval, the Board Services Specialist for the Clerk of the Board of Supervisors for Applicant, this single orange design is and has been the only "official" seal of the County.[26] There is no other "official" seal.[27] That is, the "official" seal has not been supplanted or discarded by the County.[28]
The "official" seal of Applicant as compared to the proposed Circular Mark is shown below:
(Image Omitted)
C. Analysis
Section 2(b) of the Trademark Act, 15 U.S.C. § 1052(b), prohibits registration on either the Principal or Supplemental Register of 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." This section imposes an absolute bar against registration of a mark that consists of or contains a flag, coat of arms or other insignia, and reflects the sentiment that such symbols are indicia of government authority that ought to be reserved for signifying the government. In re Gov't of Dist. of Columbia, 101 U.S.P.Q.2d 1588, 1597 n.14 (TTAB 2012), affd sub nom. In re City of Houston, 731 F.3d 1326, 108 U.S.P.Q.2d 1226 (Fed. Cir. 2013).
"The registration bar was not enacted to protect official prerogatives or preserve official symbols from desecration. Rather, the bar represents a more general determination that [government] insignia are not appropriate subjects of trademark law at all. Trademark law concerns itself with goods and services in commerce." Renna v. Cnty. of Union, 88 F.Supp.3d 310, 324 n.9 (D.N.J. 2014). As a leading authority on trademark law explains, the absolute bar to registration under Section 2(b) is founded upon the idea that "these kinds of official governmental insignia . . . should not be registered as symbols of origin for commercial goods and services [ ]" because they "ought to be kept solely to signify the government". 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:78 (5th ed. 2022).
Applicant argues that the proposed mark does not constitute "insignia" because it is not an "official" seal of Applicant, and, even if it were, registration is not precluded because Applicant is not a "municipality."[29] We consider each argument in turn.
1. The Circular Mark Constitutes "Insignia"
The record contains multiple definitions of the term "insignia", which is defined as both "a distinguishing mark or sign"[30] and "an emblem."[31] "Emblem" is defined as "a device, symbol, or figure adopted and used as an identifying mark."[32]
Although the Circular Mark has not undergone the two-step process to become an "official" seal,[33] it is displayed prominently by Applicant to signify broad County of Orange authority, records, functions and facilities. For example, the earliest display of the proposed mark can be traced back to its appearance on the cover of a 1948 book of County of Orange ordinances.[34]
Additionally, Applicant displays the proposed mark on its website. As shown below, the proposed mark appears prominently at the top and bottom of the site (here
describing Applicant's shelters[35]) and in each of the three email subscription boxes on the right, as indicated by the arrows:
(image Omitted)
From this webpage, one can click a link to access information about other Applicant services, such as business licenses, and to pay/view a property tax bill.[36]Applicant also displays its proposed Circular Mark on its "About the Board" webpage describing the Orange County Board of Supervisors,[37] which is described as an authoritative body charged with "oversee[ing] the management of the County government and its many special districts. . . . [and, i]n its legislative duties, . . . adopt[ing] ordinances, resolutions and minute orders within the limits prescribed by State law."[38]
The Circular Mark also appears on the website for the Clerk-Recorder's office. The Clerk-Recorder's office manages many official government documents, including property records, marriage licenses, and birth and death certificates, and it performs marriage ceremonies.[39]
Additionally, the proposed mark is displayed prominently on signage for County of Orange government offices, such as the Hall of Administration,...
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