Inre: City of Houston , 731 F.3d 1326 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE CITY OF HOUSTON
______________________
2012-1356
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Serial No.
77/660,948.
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IN RE THE GOVERNMENT OF THE DISTRICT OF
COLUMBIA
______________________
2012-1418
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Serial No.
77/643,857.
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Decided: October 1, 2013
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MARK G. CHRETIEN, Greenberg Traurig, LLP, of Hou-
ston, Texas, argued for appellant in No. 2012-1356. With
him on the brief were BEN D. TOBOR and ANTHONY F.
MATHENY.
2 IN RE: CITY OF HOUSTON
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, Virginia,
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 Trade-
mark 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 designa-
tors. 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.
* Honorable Dee V. Benson, United States District
Court for the District of Utah, sitting by designation.
IN RE: CITY OF HOUSTON 3
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 (see 15 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 to-
gether 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.
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 ex-
amining attorney refused to register Houston’s seal in
4 IN RE: CITY OF HOUSTON
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 munici-
pality, or of any foreign nation, or any simulation there-
of.” 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, Hou-
ston 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 offi-
cial seal (shown below) on the federal register. The Dis-
trict filed Application Serial No. 77/643,857 to cover a
variety of items, such as shirts, pens, cups, and hats.
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 obliga-
tions of the United States negotiated in the Paris Conven-
tion of 1883. After a remand to address the District’s
request to supplement the record, the Board issued a final
IN RE: CITY OF HOUSTON 5
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 registration on the principal reg-
ister 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.
6 IN RE: CITY OF HOUSTON
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 con-
struction 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 sec-
tion’s introductory sentence, which states that the defini-
tions 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 argu-
ments 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 govern-
ment 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) unam-
biguously prohibits registration of governmental insignia.
The Director argues that § 2(b) contains no exception for a
IN RE: CITY OF HOUSTON 7
government entity—in contrast to neighboring subsec-
tions 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 prohi-
bition of § 2(b). For these reasons, the Director requests
that we affirm the Board.
We begin our analysis with the language of the stat-
ute. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.
189, 194 (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 ex-
presses congressional intent [which] is rebutted only in
rare and exceptional circumstances.” United States v.
Clintwood Elkhorn Mining Co., 553 U.S. 1, 11 (2008)
(internal citations omitted).
The prohibition of § 2(b) is clear. Section 2(b) prohib-
its 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 prohi-
bition.
The definitions provided in § 45 only solidify our con-
clusion. 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 gov-
ernmental entity such as Houston is clearly an “organiza-
tion 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
8 IN RE: CITY OF HOUSTON
with this as an exclusive or even a primary policy objec-
tive. See § 2(e) (prohibiting a mark which “(2) when used
on or in connection with the goods of the applicant is
primarily geographically descriptive of them . . . (4) is
primarily merely a surname,” or “(5) comprises any mat-
ter that, as a whole, is functional.”). Therefore, we find it
difficult to conclude that the provisions in § 2 of the
Lanham Act, including § 2(b), were all intended to protect
the public from “pirates and cheats.”
Furthermore, we are reluctant to add a silent excep-
tion to § 2(b) because the neighboring sections of § 2(b)
demonstrate that the drafters of the Lanham Act knew
how to express exceptions to a section’s prohibitions when
such exceptions were warranted. See, e.g., § 2(c) (“Con-
sists of or comprises a name, portrait, or signature identi-
fying a particular living individual except by his written
consent, or the name, signature, or portrait of a deceased
President of the United States during the life of his wid-
ow, if any, except by the written consent of the widow.”)
(emphasis added).
Therefore, we conclude that the context of § 2(b) sup-
ports the plain language of the prohibition and Houston’s
identity as a governmental entity does not free it from the
reach of § 2(b). As the nature of the mark is not disputed
in this appeal—Houston admits that its city seal is an
insignia under § 2(b) of the Lanham Act—the Board
properly affirmed the examining attorney’s refusal to
register Houston’s city seal.
We note that Houston has other means to prevent “pi-
rates and cheats” from using its city seal to deceive the
public. Presumably the city of Houston could pass an
ordinance prohibiting such activity. Other legal protec-
tions under the Lanham Act may exist as well. See
15 U.S.C. § 1125. But if Houston feels that the legal
protections available to it under the Lanham Act are
insufficient, and Houston desires a rewriting of § 2(b) to
IN RE: CITY OF HOUSTON 9
permit it to register its city seal, Houston must take the
matter up with Congress; this court is not the proper
forum for rewriting of Congressional acts.
B. The District of Columbia Appeal
The District takes a quite different approach in its ar-
gument that § 2(b) does not, cannot, prohibit the District
from registering its official seal. Though its arguments
are interwoven in ways that make them somewhat diffi-
cult to separate for analysis, there seems to be two identi-
fiable issues, both keyed to the existence of the treaty
obligations of the United States prescribed by the Paris
Convention, specifically Article 6. See Int’l Convention for
the Protection of Industrial Property, as modified at The
Hague on November 6, 1925, 47 Stat. 1789, 1804–05, T.S.
834 and London on June 2, 1934, 53 Stat. 1748, 1776–78,
T.S. 941 (hereafter the “Paris Convention”). Before the
Board, the District raised a variety of interpretation
issues, but in its appeal here, and in its repetitious state-
ment of the issues in its opening brief, the District focused
its case on the international obligations issue.
1.
The District argues that Congress intended for the
Lanham Act to implement the treaty rights established in
the Paris Convention, and that this intention is made
clear by reviewing the Lanham Act’s legislative history.
Thus, according to the District, we must construe § 2(b) to
be consistent with the language of the Paris Convention
to give effect to Congressional intent.
To support its legislative history argument, the Dis-
trict, in its briefs to this court, devotes many pages to the
history of the Paris Convention, beginning with its first
iteration in 1883, and running through amendatory
sessions in Washington (1911), The Hague (1925), London
(1934), and Stockholm (1967) (despite which it is still
known as the “Paris Convention”). This history then is
10 IN RE: CITY OF HOUSTON
woven together with the history of the Trademark Act,
beginning with its first enactment in 1905 through its
revision in the Lanham Act of 1946 and subsequent
amendment. When read together in this fashion, it is the
District’s view that the Lanham Act be seen as intended
to implement the requirements of the Paris Convention,
and the Paris Convention be seen as requiring that the
official insignia of the District be entitled to domestic
registration.
The Director contends that we do not need to consider
the legislative history of the Lanham Act because the
meaning of § 2(b) is plain on its face, and thus is not
subject to any interpretation that would vary from that
plain meaning. The District responds that the meaning of
the language of § 2(b) is not all that clear, and in fact is
ambiguous on this point as evidenced among other things
by the fact that other examining attorneys in prior cases
have allowed registrations of seals by local governments. 1
Thus, for purposes of their respective positions the
parties vigorously dispute whether § 2(b) is to be consid-
ered clear on its face or is somehow ambiguous. That
determination appears relevant, in the parties’ view, to
whether the legislative history of the Lanham Act and the
Paris Convention is a proper subject for judicial consider-
ation.
In so far as the question of “legislative history” is con-
cerned, there may be some misapprehension about what
that term encompasses. It is always permissible in inter-
preting a statute to explore the statutory context of an
1 The parties have a long-running dispute over the
evidence of this proposition, but the Board eventually
admitted three examples; the parties continue to dispute
the significance of those examples.
IN RE: CITY OF HOUSTON 11
enactment and its amendments over time, as well as
other contemporary statutory provisions that are relevant
to the context of the provision under review. Those are
parts of the statutory setting that help in understanding
the meaning of particular statutory phrases. See, e.g.,
Food & Drug Admin. v. Brown & Williamson Tobacco
Corp., 529 U.S. 120, 133 (2000) (“It is a fundamental
canon of statutory construction that the words of a statute
must be read in their context and with a view to their
place in the overall statutory scheme. A court must there-
fore interpret the statute as a symmetrical and coherent
regulatory scheme, and fit, if possible, all parts into an
harmonious whole.”) (citations omitted) (internal quota-
tion marks omitted); Barela v. Shinseki, 584 F.3d 1379,
1383 (Fed. Cir. 2009) (stating that “courts must consider
not only the bare meaning of each word but also the
placement and purpose of the language within the statu-
tory scheme”).
What is less accepted is what is usually understood as
“legislative history,” such as the individual statements on
the floor of the legislature by key legislators in favor of or
opposed to the legislation, or language in committee
reports that purports to explain legislative intent. Many
opinions, including those of the Supreme Court, contain
statements to the effect that such “legislative history,” if
it ever is admissible, is only admissible when a statute is
deemed “ambiguous”; absent that, the “plain meaning” of
a statute may not be varied by these or other non-
statutory factors. See Schwegmann Bros. v. Calvert
Distillers Corp., 341 U.S. 384, 395–96 (1951) (Jackson, J.,
concurring) (stating that “[r]esort to legislative history is
only justified where the face of the Act is inescapably
ambiguous,” and “to select casual statements from floor
debates, not always distinguished for candor or accuracy,
as a basis for making up our minds what law Congress
intended to enact is to substitute ourselves for the Con-
gress in one of its important functions”); United States v.
12 IN RE: CITY OF HOUSTON
United Mine Workers of Am., 330 U.S. 258, 319 (1947)
(Frankfurter, J., concurring) (“It is one thing to draw on
all relevant aids for shedding light on the dark places of a
statute. To allow inexplicit remarks in the give-and-take
of debate to contradict the very terms of legislation and
the history behind it is to put out the controlling light on
meaning shed by the explicit provisions of an Act in its
setting.”).
Returning to the parties’ disagreement about the
threshold issue of whether the statute is ambiguous, we
agree with the Director: the statutory prohibition of § 2(b)
is quite plain on its face. While our conclusion does not
preclude an examination of legislative context—the
statutory setting—of the Paris Convention and the Lan-
ham Act, it would not be proper for us to consider the
proffered legislative history that includes so much else.
Our examination of the applicable provisions of the
Paris Convention and its context—as we explain in more
detail below—leads us to conclude that there is inade-
quate support for the District’s theory. Put another way,
even assuming that the Lanham Act was intended to
implement the obligations of the Paris Convention, under
the Paris Convention the District has no rights relating to
its official insignia; we find nothing in the text or context
of the Lanham Act or the Paris Convention, including the
prior versions of each, that suggests otherwise.
2.
Turning then to the Paris Convention itself, the Dis-
trict cites to Murray v. Schooner Charming Betsy, 6 U.S.
64 (1804), and contends that the PTO’s construction of
§2(b) and denial of the District’s registration is a violation
of the rule set forth in Charming Betsy. The understood
rule of Charming Betsy is that “an act of congress ought
never to be construed to violate the law of nations, if any
other possible construction remains.” Id. at 118. We are
urged to resolve this case on the basis of that rule of
IN RE: CITY OF HOUSTON 13
construction so as to avoid sanctioning any violation of
U.S. treaty obligations or waiver of U.S. treaty rights.
According to the District, when Articles 6ter and
6quinquies 2 of the Paris Convention as now written are
read together, they require member countries to register
as trademarks official insignia that are authorized by
competent authorities in other member countries.
The District contends that the Board’s interpretation
of § 2(b) violates this U.S. treaty obligation because it
prohibits everyone, including a municipality in a foreign
member country, from registering its insignia in the
United States. According to the District, the Board’s
interpretation of § 2(b) must be reversed as it violates the
Charming Betsy principle by construing a domestic law to
violate the law of nations. The Director reads the text of
the Paris Convention rather differently, and concludes
among other things that Article 6 does not apply to mu-
nicipal-level insignia.
To determine whether the Board’s construction of
§ 2(b) violates U.S. treaty obligations, we first turn to the
text of the treaty. As it currently stands, Article
6quinquies states:
Every trademark duly registered in the country of
origin shall be accepted for filing and protected as
is in the other countries of the Union, subject to
the reservations indicated in this Article. . . .
Paris Convention, art. 6quinquies as modified at Stock-
holm, July 14, 1967, 21 U.S.T. 1583; 828 U.N.T.S. 303.
2 “-ter” is a Latin suffix meaning in this context
“third subsection”; “-quinquies” similarly means in this
context “fifth subsection.”
14 IN RE: CITY OF HOUSTON
Article 6ter includes a relevant modification to the
general rule in Article 6quinquies:
The countries of the Union agree to refuse or to
invalidate the registration, and to prohibit by ap-
propriate measures the use, without authorization
by the competent authorities, either as trade-
marks or as elements of trademarks, of armorial
bearings, flags, and other State emblems, of the
countries of the Union, official signs and hall-
marks indicating control and warranty adopted by
them, and any imitation from a heraldic point of
view.
Id. art. 6ter.
Article 6ter, and to the extent Article 6quinquies ap-
plies at all, see below, address “armorial bearings, flags,
and other State emblems, of countries of the Union.” Id.
(emphasis added). We understand the reference in Arti-
cle 6 to “the Union” is not a reference to the Union over
which our nation fought the civil war, but rather a Union
of the countries that have joined in the treaty. Therefore,
whatever obligations the United States has under Article
6ter and Article 6quinquies relate to emblems of coun-
tries, not emblems of local public bodies such as munici-
palities.
Turning to the facts of this case, the District is a mu-
nicipality of the United States, not a “country of the
Union.” District of Columbia Organic Act of 1871,
16 Stat. 419 (1871) (stating that the District of Columbia
is “constituted a body corporate for municipal purposes,
and may … have a seal, and exercise all the powers of a
municipal corporation”). Section 2(b) prohibits registra-
tion of an “insignia of the United States, or of any State or
municipality.” The District does not dispute that its
official seal is an “insignia.” Because the District is not a
country of the Union, the District’s seal is not an official
insignia or “emblem” of a country of the Union.
IN RE: CITY OF HOUSTON 15
Furthermore, Article 6quinquies by its own terms
applies only to trademarks that are “duly registered in
the country of origin.” Since the question before us is
whether the applied-for mark can be registered in the
United States, the country of origin, invoking 6quinquies
for the answer is circular reasoning.
Therefore, the prohibition of § 2(b) as applied to the
District’s seal does not affect the treaty obligations of the
United States under the Paris Convention, and the
Charming Betsy principle does not apply given the facts of
this case. 3 As far as the obligations of the United States
under the Paris Convention are concerned, the Board was
correct to uphold the examining attorney’s refusal to
register the District’s official seal.
The District further argues that the Board’s interpre-
tation would have the effect of preventing a foreign mu-
nicipality from obtaining a registered mark in the United
States, and such effect would be a clear violation of the
Paris Convention. That argument does not hold water on
3 For the record, we note that prior to the argument
in this case the Director wrote a letter to the court with-
drawing from consideration two of the arguments in the
Director’s brief as to why the principle of the Charming
Betsy is not applicable: that the treaty is not self-
executing, and that the principle is inapplicable to cases
involving solely domestic entities and domestic acts. See
Letter from Christina J. Hieber, Associate Solicitor of the
U.S. Patent and Trademark Office, to Jan Horbaly, Clerk
of Court of the U.S. Court of Appeals for the Federal
Circuit (May 3, 2013). Since our decision does not hinge
on either of those propositions regarding the Charming
Betsy principle, but rather is based on our interpretation
of the Paris Convention itself, we need not comment
further.
16 IN RE: CITY OF HOUSTON
either side of the continent. First, the Board’s conclusion,
as is ours, was limited to the domestic entity, the District.
JA041-42 (“We conclude that registration of the mark
depicted in the subject application is barred by Trade-
mark Act § 2(b).”). Second, we decline to decide the
District’s case based upon the rights of hypothetical third
parties; we decide the case that is before us.
Houston and the District make additional subsidiary
arguments to support their assertions that the Board
improperly construed § 2(b), some of which have been
mentioned. We have considered each of these arguments
and find that they do not persuade us to a conclusion
contrary to the one we have reached.
CONCLUSION
We conclude that the Board’s final decisions should
be, and are, affirmed.
AFFIRMED