The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms or other insignia as a mark with the US Patent and Trademark Office.  The City of Houston v. Acting Director, U. S. Patent and Trademark Office, 13-784 (S.Ct. December 30, 2013). As was noted in our previous post on emoticons, US trademark law prohibits the registration of marks which fall into many different categories, including any mark which “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.”  The original Examining Attorney for Houston’s application for registration, and the US Trademark Trial and Appeal Board and the US Court of Appeals for the Federal Circuit in subsequent appeals, all agreed that the “plain meaning” of the statutory language prohibited such registration. Does this make sense?

The thrust of Houston’s argument is that although Section 2(b) has not changed since implemented in 1905 (then as Section 5(b) of the Trademark Act), that other amendments to US trademark law since then dictate that the city should be able to obtain a registration for its own official seal. Specifically, Houston contends that when the language of Section 2(b) was first enacted in 1905, only “a firm, corporation, or association as well as a natural person” were allowed to apply to register a trademark” and, thus, “it made sense to prohibit any such person or entity from applying to register a flag or coat of arms or any other insignia of the United States, or of any State or municipality, or of any foreign nation” as a privately owned trademark. However, since the law was subsequently amended to allow any “juristic person” defined to include “a firm, corporation, union, association or other organization capable of suing and being sued in a court of law” to file an application for registration of a mark, Houston argues that it would be an “absurd result” now to deny the city, as an authorized applicant, the ability to register its own official seal.

The Federal Circuit held that the Trademark Trial and Appeal Board properly affirmed the original Examining Attorney’s refusal to register Houston’s city seal, concluding that the context of Section 2(b) supported the “plain language” of the prohibition against registration. The court further stated that “Houston must take the matter up with Congress; [since] this court is not the proper forum for rewriting of Congressional acts.” It noted that Congress knew well how to legislate exceptions to the trademark law since within Section 2(b) it had expressly included two exceptions to the prohibitions, allowing registration of the names, portraits, or signatures of living individuals and deceased Presidents if appropriate written consent was obtained.

Whether the state of current federal trademark law on this issue is one of Congressional oversight or one of specific Congressional intent is not clear. Whether the Supreme Court will decide to interpret the two sections of the statute together and reach a result different from that of the lower court and tribunal remains to be seen. There is also the possibility that Congress will step in and amend the statute if it believes that is warranted. We will all have to wait with bated breath.

As for the earlier question “what can be protected as a trademark,” is the answer anything that functions as a source identifier and is not specifically prohibited by federal or state statute? As we all know, what can function and be protected as a trademark has evolved over time thanks to trademark owners’ ingenuity complemented by changes in technology. The days of word and logo marks alone are long gone. Colors, scents, sounds, flavors, product configurations, building interiors, and motion marks are all now protected by federal trademark registration. There is no question that as technology evolves new forms of marks will inevitably emerge. Equally inevitable are obstacles to the protection of these new forms of marks.

Let the evolutionary games continue….