The Government of the District of Columbia

Trademark Trial and Appeal Board

Jan 18, 2012

No. 77643857 (T.T.A.B. Jan. 18, 2012)

Mailed: January 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re The Government of the District of Columbia
________

Serial No. 77643857
Filed January 6, 2009
_______

Oral Hearing: July 7, 2011
_______

Bingham B. Leverich, Peter D. Trooboff, Marie A. Lavalleye,
and Hope Hamilton, Covington & Burling LLP for applicant.

Charles L. Jenkins, Examining Attorney, Law Office 105,
Thomas G. Howell, Managing Attorney.
_______

Before Kuhlke, Cataldo, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
The Trademark Act bars registration of any designation
which “[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.” Trademark Act § 2(b), 15 U.S.C. § 1052(b). In
this case, the District of Columbia seeks to register a
mark comprising its official seal, and the examining
attorney has issued a final refusal to register.
THIS DECISION IS A
PRECEDENT OF THE TTAB
Serial No. 77643857

2

This appeal1 raises an issue of first impression: Does
Trademark Act § 2(b) bar registration of such a mark when
the applicant is a government entity seeking to register
its own flag, coat of arms, or other insignia? We conclude
that it does, and we accordingly affirm the refusal to
register.
The applied-for mark is depicted in the subject
application2 as follows:

for “Clocks; Cufflinks; Lapel pins; Tie tacks,” (Class 14);
“Desk sets; Holders for desk accessories; Holders for

1 We also decide today In re City of Houston, __ USPQ2d __, App.
No. 77660948 (TTAB Jan. 18, 2012), involving similar legal
issues.
2 The application was filed based upon the allegation of a bona
fide intention to use the mark in commerce. The application
contains the following description of the mark and translation:
• The mark consists of a female representation of Justice,
holding a piece of parchment on which appears the word
“Constitution”, hanging a wreath on a statue of George
Washington. The United States Capitol and a train appear
behind the female, with an eagle in the front. The year
“1871” appears within a wreath with a banner, and the words
“JUSTITIA OMNIBUS” appear on the banner.
• The English translation of the word “JUSTITIA OMNIBUS” in
the mark is “JUSTICE FOR ALL”.
Serial No. 77643857

3

notepads; Memo pads; Notepads; Pen and pencil cases and
boxes; Pencils; Pens” (Class 16); “Coasters not of paper
and not being table linen; Cups and mugs,” (Class 21); and
“Hats; Polo shirts; Sweat pants; Sweat shirts; T-shirts,”
(Class 25).
I. Preliminary Issues
Applicant attached a number of exhibits to its brief
on appeal; the examining attorney objects to consideration
of them.3 This evidence falls into two categories; evidence
regarding three third-party trademark registrations which
were listed in applicant’s response to the first Office
action and were the subject of a remand, and evidence
regarding fourteen other registrations.
The relevant rule provides that:
The record in the application should be complete
prior to the filing of an appeal. The Trademark
Trial and Appeal Board will ordinarily not
consider additional evidence filed with the Board
by the appellant or by the examiner after the
appeal is filed. After an appeal is filed, if
the appellant or the examiner desires to
introduce additional evidence, the appellant or
the examiner may request the Board to suspend the
appeal and to remand the application for further
examination.

3 Applicant filed its papers in this appeal via ESTTA, the
Board’s electronic filing system, and also sent hard copies of
the filings to the Board by mail. Parties should not file by
mail hard copy duplicates of ESTTA filings. TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 110.09 (3d ed. 2011).
Serial No. 77643857

4

Trademark Rule 2.142(d).
In its response to the first Office action, applicant
had listed three third-party registrations in support of
its argument. Resp. at 9 (Sept. 16, 2009). Copies of the
registrations from the USPTO’s records were not filed with
the response, as is required in order to make the
registrations of record. E.g. In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 n.3 (TTAB 1994). However, the examining
attorney did not object to the listing or advise applicant
that such a listing is not an appropriate means to make the
listed registrations of record.
After filing its notice of appeal, applicant filed a
combined request to extend its time to file a brief and for
remand to introduce copies of the three previously-listed
third-party trademark registrations for consideration by
the examining attorney. The Board found good cause for
applicant’s remand request (making the request to extend
moot), and returned the file to the examining attorney for
consideration of the three attached third-party
registrations. Order (June 9, 2010).
On remand, the examining attorney denied applicant’s
request for reconsideration, stating that “no new facts or
reasons have been presented that are significant or
compelling with regard to the point at issue.” The
Serial No. 77643857

5

examining attorney also objected to consideration of the
three registrations, pointing out that the Office had
“consented only to the additional time for applicant to
file its appeal [brief].” Recon. Denied (Aug. 5, 2010).
Following denial of reconsideration, the case was
returned to the Board for resumption of the appeal, and
applicant filed its brief. Attached to applicant’s appeal
brief were seventeen third-party registrations, including
the three which were the subject of applicant’s remand,
App. Br. Appx. Tabs 1-3, and fourteen others, id. Tabs 4-
17. The examining attorney objected to all of this
evidence in his responsive brief. In its reply brief,
applicant responded to the objection:
There is no dispute that the additional 14
registrations were not part of the record before
this appeal. Moreover, and contrary to the
Examining Attorney’s assertion, Applicant did not
“request[] a remand in its appeal brief” for
additional consideration of these registrations.
It is nevertheless within the Board’s discretion
to consider these registrations because, in the
Examining Attorney’s own words, they raise “no
new facts or reasons” and thus are not
prejudicial and merely demonstrate more fully the
breadth of the PTO’s inconsistent application of
Section 2(b).

Reply Br. at 4 (citations omitted).
The examining attorney’s objection to the three
trademark registrations which were the subject of
applicant’s request for remand is overruled. Opposer’s
Serial No. 77643857

6

request for remand sought both an extension of time to file
its brief and a remand to introduce these registrations for
further examination. Although the managing attorney
apparently consented only to the extension of time,4 the
Board may grant an applicant’s request for remand upon a
showing of good cause with or without the consent of the
examining or managing attorney – or, indeed, over their
objection. Once the Board granted applicant’s request and
remanded the file to the examining attorney for
consideration of this evidence, the three third-party
registrations which were the subject of the remand request
became part of the record.
The situation is different with respect to the
evidence of the fourteen additional registrations. App.
Br. Appx. Tabs 4-17. As applicant admits, at the time they
were filed as attachments to applicant’s brief, these
registrations were not part of the record, either prior to
appeal or submitted pursuant to our remand order. The
Board will generally not consider evidence in the first

4 Contrary to the examining attorney’s contention, Ex. Att. Br.
at 6-7, applicant did not misrepresent to the Board that the
examining or managing attorney consented to the request for
remand. Applicant recited the Managing Attorney’s consent in
connection with the requested extension of time. Applicant also
requested remand, but did not allege that the examining or
managing attorney had consented thereto.
Serial No. 77643857

7

instance; that is the job of the examining attorney.
Evidence which has not been presented to the examining
attorney during examination or on remand will ordinarily
not be considered on appeal. Trademark Rule 2.142(d).
Applicant had at least three opportunities to submit
any evidence it believed relevant for consideration by the
examining attorney: (1) in response to the first office
action; (2) with a request for reconsideration filed within
six months of a final Office action (such a request was not
filed in this case); or (3) with its request for remand.
Applicant provided no explanation of why this evidence was
not timely submitted and no good reason5 for our

5 As noted previously, applicant argues that
[i]t is ... within the Board’s discretion to consider
these registrations because, in the Examining
Attorney’s own words, they raise “no new facts or
reasons” and thus are not prejudicial and merely
demonstrate more fully the breadth of the PTO’s
inconsistent application of Section 2(b).
Reply Br. at 4. The “no new facts or reasons” statement
applicant quotes comes from the examining attorney’s denial of
the request for reconsideration. But as applicant admits, this
evidence was not then before the examining attorney, so the
quoted statement could not have referred to it.
Moreover, applicant’s citation of In re Boyd Gaming Corp., 57
USPQ2d 1944, 1945 n.2 (TTAB 2000), is inapposite. Boyd, like the
subsequent case of In re Broyhill Furniture Indus. Inc., 60
USPQ2d 1511 (TTAB 2001), concerned whether and to what extent
registrations which were merely listed in an Office action
response could be considered on appeal when the examining
attorney did not object to the list during examination. As was
clear from Broyhill, the examining attorney’s failure to timely
object to the admissibility of the list results in a waiver of
any objection to consideration of it, and the list itself may be

Serial No. 77643857

8

consideration of it on appeal in derogation of Trademark
Rule 2.142(d).
In sum, the examining attorney’s objection is
overruled with respect to the three registrations which
were the subject of applicant’s request for remand, and
sustained as to the other fourteen registrations.
II. Trademark Act § 2(b)
It is the examining attorney’s position that
Trademark Act § 2(b) prohibits registration of official
insignia, even by the relevant governmental entity. In
response, applicant argues that Section 2(b) should be
interpreted as including an exception for governmental

considered by the Board on appeal “for whatever limited probative
value such evidence may have.” Broyhill, 60 USPQ2d at 1513 n.3.
Neither Boyd nor Broyhill permit the submission of full copies of
the registrations on appeal, nor do they suggest that the failure
to object to the mere listing of three third-party registrations
is a waiver to the submission of proper copies of any and all
other registrations on appeal. See City of Houston, slip op. at
6 n.7. In the case at bar, applicant had listed during
examination the three registrations that were the subject of the
remand. But the fourteen additional registrations submitted with
applicant’s brief were not listed during examination or remand,
so the examining attorney could not have objected to them and the
lack of any such objection cannot be construed as a waiver.
Applicant cannot claim surprise at this result, as it clearly
understood the rules. When it filed its request for remand,
applicant stated that it had referenced the three registrations
during examination, but had “inadvertently omitted” copies of
them, thus recognizing that they had not been properly submitted.
Req. for Remand at 1-2. It is not clear why applicant did not
also request the opportunity to submit the additional fourteen
registrations at that point, but having made that choice,
applicant may not bypass examination and submit them for the
first time on appeal.
Serial No. 77643857

9

entities seeking to register their own insignia, and bases
much of its argument on its theory of what Congress did
(and did not) intend in enacting Section 2(b), and how the
statute should be interpreted in light of that intent.
While Congressional intent is clearly a central
inquiry in statutory interpretation, we must begin by
analyzing the words of the statute itself. Milner v. Dep’t
of Navy, 131 S. Ct. 1259, 1264 (2011); Park ‘N Fly v.
Dollar Park and Fly, Inc., 469 U.S. 189, 224 USPQ 327, 329
(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.”). Our search for Congressional
intent is highly constrained, however, for if the statutory
language is clear, our inquiry is usually at an end because
Congress is presumed to have intended exactly what was
enacted. United States v. Clintwood Elkhorn Mining Co.,
553 U.S. 1, 11 (2008) (“The strong presumption that the
plain language of the statutes expresses congressional
intent is rebutted only in rare and exceptional
circumstances.” (quotation marks, alterations, and
citations omitted)); Holmes Group Inc. v. Vornado Air
Circulation Sys. Inc., 535 U.S. 826, 62 USPQ2d 1801, 1804
(2002) (“Our task here is not to determine what would
Serial No. 77643857

10

further Congress's goal of ensuring patent-law uniformity,
but to determine what the words of the statute must fairly
be understood to mean.”); Xianli Zhang v. United States,
640 F.3d 1358, 1364 (Fed. Cir. 2011) (“If the statute is
clear and unambiguous, then the plain meaning of the
statute is conclusive, and we give effect to the
unambiguously expressed intent of Congress.” (citations and
quotation marks omitted)). As Justice Holmes famously put
it, “[w]e do not inquire what the legislature meant; we ask
only what the statute means.” Oliver Wendell Holmes, Jr.,
The Theory of Legal Interpretation, 12 Harv. L. Rev. 417,
419 (1899). We add that in this case, the paucity of
documents evidencing Congressional intent on this provision
limits this aspect of our statutory analysis. See note 22,
infra.
Finally, we keep in mind that statutory language must
be construed not in isolation, but with reference to the
context in which it appears. Koons Buick Pontiac GMC, Inc.
v. Nigh, 543 U.S. 50, 60 (2004) (“Statutory construction is
a holistic endeavor.” (quotation marks and citations
omitted)); In re Nantucket, Inc., 677 F.2d 95, 213 USPQ
889, 892 (CCPA 1982) (“Each part or section of a statute
should be construed in connection with every other part or
section so as to produce a harmonious whole.”).
Serial No. 77643857

11

A. Statutory Provisions
The relevant statutory language provides as follows:
No trademark by which the goods of the applicant
may be distinguished from the goods of others
shall be refused registration on the principal
register on account of its nature unless it—

...
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,[6] or any simulation thereof.

Trademark Act § 2(b).
The quoted provision is substantially similar to a
provision of the Trademark Act of 1905, which reads as
follows:
[N]o mark by which the goods of the owner of the
mark may be distinguished from other goods of the
same class shall be refused registration as a
trade-mark on account of the nature of such mark
unless such mark

...
Consists of or comprises the flag or coat of arms
or other insignia of the United States or any
simulation thereof, or of any State or
municipality or of any foreign nation....

Trademark Act of 1905, § 5, ch. 592 § 5, 33 Stat. 724
(1905) (repealed 1946).

6 For ease of reference, we refer generally to “the flag or coat
of arms or other insignia of the United States or of any State or
municipality, or of any foreign nation” (and to their equivalent
in the 1905 statute and the Paris Convention) as governmental or
official insignia.
Serial No. 77643857

12

B. Construction
We find the quoted language of the current statute –
and that of its predecessor – to be plain and clear on its
face. Reversing the negative syntax of Section 2, we read
the quoted subsection to bar registration of any mark which
is or includes the “coat of arms or other insignia of ...
any ... municipality.” While the text does not resolve all
definitional issues (i.e., what constitutes “other
insignia” or a “simulation”), those questions are not at
issue in this case.7 Further, we find the statute to be
uniform in its applicability. The text of the statute
offers no exception to the prohibition on registration,
even when a governmental entity applies to register its own

7 While our precedent interprets what constitutes official
insignia under Trademark Act § 2(b) narrowly, In re U.S. Dep’t of
the Interior, 142 USPQ 506, 507 (TTAB 1964) (logo of National
Park Service held not to be an insignia of the United States);
U.S. Navy v U.S. Mfg. Co., 2 USPQ2d 1254, 1256 (TTAB 1987)
(“USMC” held not to be a flag, coat of arms, or other insignia),
in this case applicant affirmatively states that its applied-for
mark comprises the official seal of the District of Columbia.
Moreover, while the District of Columbia is neither a state nor
part of a state, see U.S. CONST. art. I, § 8, cl. 17, it is
clearly a “municipality,” as that word is commonly defined. See
BLACK’S LAW DICTIONARY, 918 (5th ed. 1979) (“A legally incorporated
or duly authorized association of inhabitants of limited area for
local governmental or other public purposes.”), of which we take
judicial notice. As applicant notes, “the District of Columbia
government is ‘constituted a body corporate for municipal
purposes, and may ... exercise all the powers of a municipal
corporation.’” App. Br. at 9 (quoting the Organic Act of 1871,
ch. 62, 16 Stat. 419 (1871)).
Serial No. 77643857

13

official insignia.8
Applicant argues that Congress did not intend such a
result, and we consider applicant’s arguments regarding
legislative intent in detail below. But the first and most
obvious response to applicant’s arguments is that we must
presume Congress to know how to write legislation to effect
its own intent. As the Supreme Court said long ago,
[t]he primary and general rule of statutory
construction is that the intent of the lawmaker is to
be found in the language that he has used. He is
presumed to know the meaning of words and the rules of
grammar. The courts have no function of legislation,
and simply seek to ascertain the will of the
legislator. ... No mere omission, no mere failure to
provide for contingencies, which it may seem wise to
have specifically provided for, justify any judicial
addition to the language of the statute.

United States v. Goldenberg, 168 U.S. 95, 102-03 (1897).
Because applicant’s proposed exception does not appear in
the statutory text, and is in fact contrary to the
statutory text and construction, as discussed below, we
will not presume that Congress intended such an exception

8 Shortly after passage of the 1946 Act, one commentator noted
that Section 2 sets out various prohibitions to registration.
“Some of these prohibitions are absolute in character, while
others are relative or ‘temporary.’ In the first category belong
the provisions which prohibit the registration of immoral,
deceptive, or scandalous matter, or marks comprising the flag or
coat of arms.” Walter J. Derenberg, The Patent Office as
Guardian of the Public Interest in Trade-Mark Registration
Proceedings, 31 J. PAT. & TRADEMARK OFF. SOC’Y 647 (1949).

Serial No. 77643857

14

to apply.
This is all the more clear when we consider
Section 2(b)’s neighboring subsections, Trademark Act
§§ 2(c) and 2(d), both of which do feature exceptions
similar to that which applicant seeks here. Trademark Act
§ 2(c) prohibits registration of the “name, portrait, or
signature” of a “living individual” or deceased president
“during the life of his widow,” except by the individual’s
or widow’s consent. Such individuals may thus register
their own name, portrait, or signature, Alford Mfg. Co. v.
Alfred Elec., 137 USPQ 250 (TTAB 1963), aff’d, 333 F.2d
912, 142 USPQ 168 (CCPA 1964) (signature of application
constitutes “consent” to registration of one’s own name,
portrait, or signature), or consent to such registration by
others.
Similarly, Trademark Act § 2(d) prohibits registration
of marks which would be likely to confuse, but only if the
prior mark is used or registered “by another.” Thus an
applicant may register a mark notwithstanding that it is
similar to its own registered or previously used marks. If
there were any doubt on the question, these provisions
demonstrate that Congress is fully capable of expressly
exempting certain persons from the statutory prohibitions
Serial No. 77643857

15

to registration when it intends to do so.9
Moreover – to the extent it matters – neither the
Trademark Act in general nor Section 2 in particular
features an overly-complicated statutory structure; it
seems unlikely that the absence of applicant’s exception
was an oversight or drafting error. Indeed, as applicant
points out, the prohibition against registration of
governmental insignia has been part of U.S. trademark law
for over 100 years. Congress has revisited the trademark
law a number of times during the past century (including a
major revision in 1946 in which what is now Section 2(b)
was modified slightly), all without providing for the
proposed exception. Against that background, we find it
very difficult to believe that Congress intended such an
exception, but failed to provide explicitly for it by
legislation.
Finally, we note that our construction of Trademark

9 Applicant’s construction of Trademark Act § 2(b) also seems
inconsistent with Trademark Act §§ 2(f) (acquired
distinctiveness), and 23 (Supplemental Register). Both
provisions permit registration of some otherwise unregistrable
marks. However, both sections expressly exclude their
application to marks which would be unregistrable under Trademark
Act § 2(b). If Congress intended that governments be permitted
to register their own official insignia as trademarks, it is not
at all clear why the benefits of Trademark Act §§ 2(f) and 23 are
not extended to such marks. On the other hand, the exclusion of
such marks in Trademark Act §§ 2(f) and 23 is entirely logical if
Section 2(b) is read as an absolute bar to registration.
Serial No. 77643857

16

Act § 2(b) is consistent with the USPTO’s interpretation of
the section: “The statute does not list any exceptions
that would allow for countries, states, or municipalities
to register their own flags or insignia. Applications for
marks that contain flags, coats of arms, or government
insignia, even if filed by the relevant state, country, or
municipality, must be refused.”10 TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) § 1204.04(a) (8th ed. 2011).
C. Applicant’s Arguments
Under several different theories, applicant argues
that we should read Trademark Act § 2(b) as including an
exception, namely that when the applicant is the
governmental entity referred to in Section 2(b),
registration should not be refused on account of Section
2(b). We consider applicant’s arguments in turn.
1. Congressional Intent
Applicant argues that we must construe Trademark Act
§ 2(b) in light of Congress’ intention in adopting it.

10 The quoted text first appeared in the Sixth Edition of the
TMEP, issued October 12, 2009, based on identical language in an
Examination Guide issued in 2007. Exam. Guide 2-07, Section 2(b)
- Flags and Government Insignia, p.5 (Nov. 27, 2007).
Examination Guides are publically available on the USPTO website
and constitute official interim guidance for the examination
corps and the public prior to incorporation of the material in
the TMEP. See www.uspto.gov/trademarks/resources/index.jsp (Jan.
9, 2012).
Serial No. 77643857

17

Applicant advances two primary arguments with respect to
legislative intent. First, applicant contends that what is
now Trademark Act § 2(b) was originally enacted with the
intent of implementing the Paris Convention, and that the
intent of the Paris Convention was to prevent others from
registering the official insignia of governments, not to
prevent those governments from registering their own
insignia. Applicant therefore argues that we should
construe the statute as barring registration except upon
application of the governmental authority itself. Second,
applicant argues that the purpose of Trademark Act § 2 is
the avoidance of confusion. And since no confusion would
result from a government’s registration of its own official
insignia, we should construe Section 2(b) to include an
exception allowing such registration.
a. The Paris Convention

Applicant argues that what is now Trademark Act § 2(b)
has its origins in a multilateral treaty signed nearly 130
years ago.11 International Convention for the Protection of
Industrial Property, Mar. 20, 1883, 25 Stat. 1372, T.S. 379

11 Under an alternative theory of the history of Trademark Act
§ 2(b), the applicant in City of Houston contends that the
provision was an early attempt at a statute preventing flag
desecration. City of Houston, slip op. at 10-12. As discussed
in that case, this alternative theory does not yield a different
result.
Serial No. 77643857

18

(“Paris Convention”). Applicant argues that Section 5 of
the Trademark Act of 1905 was (to the extent relevant here)
enacted to implement the Paris Convention, and further,
because the Paris Convention was not intended to bar
governmental authorities from registering their own
official insignia, we should similarly assume that
Congress, in implementing the Paris Convention, likewise
did not intend to bar such registrations.
Among other provisions relating to patents and
trademarks, the 1883 text of the Paris Convention provided
as follows:
ARTICLE VI

...
The deposit may be refused, if the object, for
which it is asked, is considered contrary to
morals and to public order.

Paris Convention, art. 6 (1883). In a protocol
accompanying the signature of the convention, the
signatories further agreed as follows:
FINAL PROTOCOL

4. ... In order to avoid all misinterpretation,
it is understood that the use of public armorial
bearings and decorations may be considered
contrary to public order, in the sense of the
final paragraph of Article 6.

Paris Convention, Final Protocol art. 4 (1883).
Following advice and consent of the Senate, the Paris
Serial No. 77643857

19

Convention entered into force as to the United States on
May 30, 1887. The treaty has been modified a number of
times since 1883, including revisions at Brussels in 1900
which did not change the provisions of Article 6 or the
Final Protocol quoted above. The next revision resulted
from a conference in Washington, D.C. in 1911. The
Washington text provides in relevant part:
ARTICLE 6.
Every trademark regularly registered in the
country of origin shall be admitted to
registration and protected as that in the other
countries of the Union.

However, there may be refused or invalidated:

...
3. Marks which are contrary to morals or public
order.

FINAL PROTOCOL
...
AD ARTICLE 6.

It is understood that the use of badges,
insignia or public decorations which shall not
have been authorized by competent powers, or the
use of official signs and stamps of control and
of guaranty adopted, by a unionist country, may
be considered as contrary to pub1ic order in the
sense of No. 3 of Article 6.

However, marks, which contain, with the
authorization of competent powers, the
reproduction of badges, decorations or public
insignia, shall not be considered as contrary to
public order.

Paris Convention, as modified at Washington, June 2, 1911,
Serial No. 77643857

20

37 Stat. 1645, T.S. 579 (“Washington Act”). The quoted
provision of the Final Protocol was eventually merged into
the text of the treaty, the result becoming Article 6ter,
which first appeared following a conference at The Hague.
Paris Convention, as modified at The Hague, Nov. 6, 1925,
47 Stat. 1789, T.S. 834. As eventually amended, the
provision appears in the current text of the treaty as
follows:
Article 6ter

Marks: Prohibitions concerning State Emblems,
Official Hallmarks, and Emblems of
Intergovernmental Organizations

(1) (a) The countries of the Union agree to
refuse or to invalidate the registration, and to
prohibit by appropriate measures the use, without
authorization by the competent authorities,
either as trademarks or as elements of
trademarks, of armorial bearings, flags, and
other State emblems, of the countries of the
Union, official signs and hallmarks indicating
control and warranty adopted by them, and any
imitation from a heraldic point of view.

Paris Convention, art. 6ter, as modified at Stockholm, July
14, 1967, 21 U.S.T. 1583; 828 U.N.T.S. 303 (“Stockholm
Act”).
The current text of the Paris Convention does not
require signatory states to prohibit the registration of
official insignia if registration has been authorized by
the relevant government authority. But it is also worth
Serial No. 77643857

21

noting that this was not so until 1911, well after the
passage of § 5 of the Trademark Act of 1905. Prior to
then, the provisions regarding the refusal of registration
of government insignia as trademarks made no mention of
registration with authorization, suggesting instead that
such a ban was to be applied to all such marks regardless
of authorization or the identity of the applicant. See
Paris Convention, art. 6, Final Protocol art. 4 (1883).
Thus, applicant’s argument that the relevant provision
of the 1905 Act – which was carried forward with little
change in § 2(b) of the Trademark Act of 1946 – reflected
Congress’ intent to adopt the arguably more permissive
approach to registration of official insignia when
authorized by the relevant governmental authority, as found
in the current text of the Paris Convention, is not
supported by the facts. Indeed, the facts imply the
opposite. If anything might be presumed from this sequence
about Congressional intent, it might well be that the
relevant provision of the 1905 Act was instead adopted
intentionally to enact the more restrictive approach taken
by the 1883 text of the treaty, which was in effect in
1905, the year Congress passed the predecessor of Trademark
Act § 2(b).
Article 6ter of the (current) Paris Convention does
Serial No. 77643857

22

not require the United States to bar registration of
governmental insignia if they are authorized, and
presumably, by extension, it would not require prohibition
when the governmental authority is itself the applicant,
i.e., granting itself permission to register. But that is
of no help to applicant here. First, the Paris Convention
is not self-executing, so we must look for authority to
whatever provisions Congress has made in implementing the
treaty, and the treaty itself creates no rights that can be
directly relied upon by applicants in the United States.
In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1175-76 (Fed.
Cir. 2005) (quoting Kawai v. Metlestics, 480 F.2d 880, 178
USPQ 158, 161 (CCPA 1973)).12 And second, even if the
treaty were self-executing, the only relevant requirement
in Article 6ter is that signatory states “refuse ... the
registration ... without authorization by the competent
authorities, ... as trademarks, ... armorial bearings,
flags, and other State emblems....” Paris Convention,
Stockholm Act, art. 6ter (emphasis added). The language of
this provision does not require member states to register

12 Applicant notes that “[t]here are conflicting views as to
whether the Paris Convention is a self-executing treaty.” App.
Br. at 11 n.7. Whatever the state of the law in other circuits,
we are bound by the decisions of the Federal Circuit (and its
predecessor, the Court of Customs and Patent Appeals), which
directly reviews our decisions on appeal.
Serial No. 77643857

23

such marks which are authorized, nor does it prohibit
signatory states from adopting different or more
restrictive rules not inconsistent with it. Thus, the
clear meaning of Trademark Act § 2(b) is not inconsistent
with the requirements of the Paris Convention, and does not
violate U.S. treaty obligations.
Finally, applicant points to the trademark statutes of
the United Kingdom and Canada, both signatories of the
Paris Convention, and both of which provide the exception
which applicant asks us to apply to U.S. law. App. Br. at
6 n.1. Applicant urges us to interpret our laws consistent
with those of other signatories of the Paris Convention.13
We note, however, that the United Kingdom and Canada have
each explicitly set out the exception in the text of their

13 Applicant cites a comment by Justice Scalia during oral
argument in Abbot v. Abbot, 130 S. Ct. 1983 (2010), suggesting
that ambiguous treaty terms should be construed giving
“considerable weight” to “the opinions of our sister
signatories.”
Comments by a single justice during oral argument are not law,
and the Paris Convention is very different from the Hague
Convention on the Civil Aspects of International Child Abduction,
which was at issue in Abbot. We note that the Court’s ultimate
decision in Abbot relied on a definition in the treaty itself,
providing a “uniform, text-based approach [which] ensures
international consistency in interpreting the Convention.” Id.
at 1991. In the case at bar, the Paris Convention does not
itself provide a definitive answer to the question at hand,
taking a permissive, rather than a prescriptive approach, nor is
there the same need for international consistency as there is in
the procedure applicable in cases of child abduction, where
inconsistency could lead to forum-shopping. See id. at 1996.
Serial No. 77643857

24

trademark statute. Neither country’s statute is evidence
that the Paris Convention requires such an exception, and
the fact that both have established the exception through
domestic legislation provides no support for the notion
that we should or could read the exception into the U.S.
law contrary to our domestic legislation.
b. U.S. Law
In addition to relying on the Paris Convention,
applicant advances several other theories focusing on
domestic law.
Applicant first notes that in passing the 1905 Act,
Congress generally stated that
Section 5 of the proposed bill we believe will
permit the registration of all marks which could,
under the common law as expounded by the courts,
be the subject of a trade-mark and become the
exclusive property of the party using the same as
his trade-mark.

App. Br. at 8 (quoting S. Rep. No. 58-3278 at 8 (1905);
H.R. Rep. No. 58-3147 at 7 (1904)). Applicant adds that
the official seal which it has applied to register “is
obviously a mark that [applicant] owns...,”14 App. Br. at 9,

14 Applicant may be correct that the subject matter of the
registration is a “trademark” that applicant “owns.” We need not
reach that question, as the only issue before us is whether
registration may be refused under Trademark Act § 2(b). However,
the conclusion is not as obvious as applicant suggests. There is
at least some thought that official insignia are not trademarks

Serial No. 77643857

25

at all, at least not trademarks in the usual sense: “[Article
6ter of the Paris Convention] concerns trademarks, but its
purpose is not to regulate their protection as subjects of
industrial property but rather to exclude them from becoming such
subjects in certain circumstances.” G.H.C. BODENHAUSEN, GUIDE TO THE
APPLICATION OF THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY,
95 (1969). See In re Am. Glue Co., 27 App. D.C. 391 (D.C. Cir.
1906) (“[N]o person has had, in the sense of [the 1905 Act], an
‘exclusive use’ of the Great Seal of the United States, and no
person can claim a prescriptive right to use a mark prohibited by
law.”)
Even prior to passage of the 1905 Act, there was significant
concern over use of governmental insignia in trademarks not, for
the most part because of any potential for confusion or desire to
comply with the Paris Convention, but because it was felt that
such symbols ought not be the subject of commerce at all. See,
e.g., Ex parte Ball, 98 O.G. 2366 (Comm’r 1902) (application for
registration of trademark comprising depictions of the U.S. flag
and seal refused: “It is contrary to public policy to detract in
any way from the honor which is due to the flag. This result
certainly follows from its use as an advertisement in trade, and
such use is not to be aided or encouraged by this Office.”); Ex
parte Standard Fashion Co., 89 O.G. 189 (Comm’r 1899) (“It is
conceded that the representation of the United States flag per se
is not permissible. ...I think that its use in trade as a mark
for goods does not tend to add to its glory.”). Cf. Armstrong
Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 326
(1938) (noting in passing that such marks are infra dignitatem).
A number of states passed laws prohibiting commercial use of
official insignia for similar reasons. See e.g. Halter v. State,
105 N.W. 298, 299-300 (Neb. 1905) (“It is a matter of common
knowledge that the use of the flag for advertising purposes
offends the sensibilities of a large portion of our people. ...
The flag is the emblem of national authority. To the citizen it
is an object of patriotic adoration, emblematic of all for which
his country stands – her institutions, her achievements, her long
roster of heroic dead, the story of her past, the promise of her
future; and it is not fitting that it should become associated in
his mind with any thing less exalted, nor that it should be put
to any mean or ignoble use.”), aff’d 205 U.S. 34 (1907) (Use in
commerce “tends to degrade and cheapen the flag in the estimation
of the people, as well as to defeat the object of maintaining it
as an emblem of national power and national honor.”); People ex
rel. McPike v. Van de Carr, 70 N.E. 965 (N.Y. 1904); Ruhstrat v.
People, 57 N.E. 41 (Ill. 1900); Commonwealth v. Sherman Mfg. Co.
75 N.E. 71 (Mass. 1905).
Applicant’s intended use of its own official seal as a
trademark could be viewed as inconsistent with sentiment
prevailing at the time the prohibition was written into § 5 of

Serial No. 77643857

26

and therefore refusal of applicant’s registration is
inconsistent with the legislative intent embodied in
Section 5 of the 1905 Act and Section 2(b) of the 1946 Act.
We agree that Trademark Act § 2, (like Section 5 of
the 1905 Act), generally embodies a liberal standard of
registration. Nonetheless, it is still a standard, and
registration of some marks is clearly prohibited by the
express terms of the statute. There is simply no authority
which would support using a brief, general expression of
legislative intent to override a clear and specific
statutory bar to registration.
Applicant also points to language in Section 2(b)
which prohibits not only registration of official insignia,
but also “any simulation thereof.” “A government entity
would have no reason to register a ‘simulation’ of its
official insignia,” and even if it did, such registration
would not cause deception or confusion, the prevention of
which is, according to applicant, a “central purpose of all
of the subparagraphs of Section 2....” Reply Br. at 6.
Applicant argues that this reflects an intent that the
statute not be interpreted to prohibit government
registration of its own insignia. Reply Br. at 6-7.

the 1905 Act and after, namely, that governmental insignia ought
not be the subject of commerce.
Serial No. 77643857

27

There are several problems with applicant’s position.
First, even assuming that the “simulation” language is
aimed solely at third parties, rather than at governments
themselves, it does not stand to reason that the rest of
the subsection is aimed solely at third parties. By its
terms, the statute prohibits registration of (1) the
described official insignia; and (2) “any simulation
thereof.” Even if the “simulation” language would as a
practical matter apply only to third parties, there is no
logical reason why that practical limitation on the effect
of the prohibition on registration of simulations must
necessarily be read to limit the prohibition on
registration of the actual government insignia. To the
contrary, the statute’s mention of both official insignia
and simulations plainly reads as a ban on registration of
both; one does not limit the other.
Second, applicant’s narrow focus on confusion is
misplaced. The prevention of confusion or deception is not
the only concern of Trademark Act § 2. That section sets
out a number of grounds for refusal of registration that
have nothing to do with confusion. For example, Trademark
Act § 2(a) prohibits registration of immoral or scandalous
Serial No. 77643857

28

matter,15 and Section 2(e) sets out a variety of subject
matter which is not registrable because – for various
reasons – it is not considered to be a trademark – at least
not without a showing of distinctiveness.
In fact, if prevention of confusion were the “central
purpose” of Trademark Act § 2(b), it would be superfluous,
because registration of marks which would cause confusion
is prohibited under Trademark Act § 2(d), and Trademark Act
§ 2(a) prohibits registration of marks which would be
deceptive or falsely suggest a connection with others. To
the contrary, rather than simply being a special case of
confusion, registration of governmental insignia is
prohibited by Trademark Act § 2(b) regardless of whether
confusion would result. We conclude that neither the

15 These provisions are similar to the language of the 1883 text
of the Paris Convention, which allowed member states to refuse
registration if the proposed mark “is considered contrary to
morals and to public order,” Paris Convention, art. 6(3) (1883),
and which defined official insignia as “contrary to public
order...,” id., Final Protocol art. 4 (1883).
The original text of the Paris Convention (in place when the
1905 Trademark Act was passed) could be read as disapproving as
inappropriate the use of official insignia as the subject matter
of trademarks used in commerce, entirely apart from any concerns
about customer confusion. Such reading would be compatible with
the contemporaneous U.S. case law. See supra n. 14. To the
extent such attitudes have since changed, such change may be a
valid reason to urge Congress to revisit this issue, but it does
not provide justification for an administrative agency to ignore
or rewrite the law. We offer no opinion on whether prevailing
attitudes have changed or whether legislative action would be
appropriate. But to the extent applicant’s complaint lies with
the express terms of the statute, we can provide no remedy.
Serial No. 77643857

29

“simulations thereof” language in Section 2(b), nor
applicant’s contention that registration of such marks
would not cause confusion is sufficient to show that
Congress intended the exception applicant seeks.
2. Trademark Act § 2(b) is Unambiguous
When a statute is unambiguous, we presume that the
intent of the legislature was expressed in the clear words
of the statute itself. Ex. Att. Br. at 4-5 (unnumbered)
(citing Pequignot v. Solo Cup Co., 95 USPQ2d 1501, 1505-06
(Fed. Cir. 2010) (“Solo’s argument is unavailing, however,
as we need not resort to legislative history when a statute
is unambiguous. See Conn. Nat'l Bank v. Germain, 503 U.S.
249, 254 (1992) (rejecting consideration of legislative
history because statutory language was unambiguous).”)).
Applicant belatedly recognizes this issue, arguing for
the first time in its reply brief16 that Trademark Act
§ 2(b) is ambiguous on its face, is ambiguous as applied,
and that resort to legislative history would be appropriate
even if the statute were unambiguous.
The argument that Section 2(b) is ambiguous on its

16 The examining attorney did not mention it until his brief on
appeal, either. However, it is the applicant, not the examining
attorney, that is advancing an argument based on legislative
history. Thus applicant’s arguments justifying consideration of
the legislative history should have been made in its main brief,
if not during examination.
Serial No. 77643857

30

face is essentially applicant’s argument, discussed above,
that the inclusion of the words “any simulation thereof”
expresses a clear intent that the provision apply only to
third parties despite the clear terms of the statute.
Reply Br. at 6-7. Again, we disagree. There is nothing
unclear, inconsistent, or illogical about this language,
and it does not evidence a legislative intention that the
bar to registration not apply to government entities
seeking to register their own official insignia. Indeed,
to read in such an exclusion would be incompatible with the
structure of the rest of the Act where exclusions are
specifically delineated. See II.B, supra.
Applicant further argues that the statute is ambiguous
“as applied,” as demonstrated by “the inconsistent
interpretation of Section 2(b) by various PTO examining
attorneys and this Board....”17 Applicant points to the

17 Applicant’s theory tends to undermine the relationship between
the different branches of government. If Congress has drafted a
clear and unambiguous statute, that statute does not somehow
become ambiguous because of assertedly incorrect application of
it by an administrative agency. Those individual administrative
decisions may be correct or incorrect, but they cannot transform
the words of the statute so as to render obscure what was once
clear. To the contrary, to determine whether the statute is
ambiguous, we look to the statute itself. And if the statute is
clear, we need look no further.
The cases applicant cites are not to the contrary. In Gunther
v. Cty. of Washington, 623 F.2d 1303 (9th Cir. 1979), the court
noted that inconsistent treatment of the statute in question by
other courts “underscores [its] ambiguity.” Id. at 1320-21.

Serial No. 77643857

31

three registrations it submitted on remand to the examining
attorney (plus the fourteen others attached to its brief,
which we have excluded), as well as this Board’s decision
in In re U.S. Dep’t of the Interior.
Again, we disagree. As mentioned above, the issue
before us is one of first impression with the Board. The
question we faced in Department of the Interior was the
registrability of the following logo of the National Park
Service:

The Board held that the inclusion in Trademark Act § 2(b)
of “other insignia of the United States” did not bar
registration of any device used by a government or an
agency of the government. Rather, we concluded that as
used in Trademark Act § 2(b),

Thus the court treated inconsistent application of the statute
(here by sister circuits, not an administrative agency) as
confirming the ambiguity it found. But the ambiguity in Gunther
was not created by the inconsistent court decisions, but by
Congress. The situation in Marathon LeTourneau Co. v. Nat’l
Labor Relations Bd., 414 F. Supp. 1074 (S.D. Miss. 1976), was
largely the same; different treatment by other courts confirmed
an ambiguity, but did not create it. Id. at 1080.
Serial No. 77643857

32

the wording “or other insignia of the United
States” must be restricted in its application to
insignia of the same general class as “the flag
or coats of arms” of the United States. Since
both the flag and coat or [sic] arms are emblems
of national authority it seems evident that other
insignia of national authority such as the Great
Seal of the United States, the Presidential Seal,
and seals of government departments would be
equally prohibited registration under Section
2(b). On the other hand, it appears equally
evident that department insignia which are merely
used to identify a service or facility of the
Government are not insignia of national authority
and that they therefore do not fall within the
general prohibitions of this section of the
Statute.

Dep’t of the Interior, 142 USPQ at 507. We concluded that
the National Park Service logo at issue was not of a type
that was prohibited registration under Trademark Act
§ 2(b).
By contrast, in the case at bar, applicant does not
deny that the applied-for mark is its official seal, and
thus an emblem of authority of the Government of the
District of Columbia, or that it is “of the same general
class” as, for instance, the Great Seal of the United
States, albeit on a municipal, rather than national level.
Applicant frankly admits “[i]t is undisputed that Applicant
seeks to register its own official seal.” App. Reply Br.
at 1. This case is not about whether applicant may
register any mark under Trademark Act § 2(b); clearly
governments are not prohibited as a class from seeking any
Serial No. 77643857

33

registration. Rather, the issue before us is whether
applicant may register its official seal. Our decision in
Department of the Interior does not directly answer the
question, but in any event, it is clearly neither
inconsistent with the refusal in this case,18 nor does it
somehow create ambiguity in the statutory language itself.
Similarly, the actions of examining attorneys in
approving the marks in the three registrations applicant
submitted on remand did not create any ambiguity in the
language of the statute, nor do they provide applicant with
any right to register its own mark. The three
registrations of record appear to be the official seals19 of
the City of Atlanta, Georgia, Reg. No. 3089604 (registered
May 9, 2006), the City of Scottsdale, Arizona, Reg. No.
3263901 (registered July 17, 2007), and the Town of Miami
Lakes Florida, Reg. No. 3480633 (registered Aug. 5, 2008).

18 In Department of the Interior, the Board drew a distinction
between insignia like the flag or Great Seal on the one hand, and
marks used by governments “merely ... to identify a service or
facility of the Government” on the other, allowing registration
by the government only of the latter. Dep’t of the Interior, 142
USPQ at 507. Under applicant’s reading of Trademark Act § 2(b),
all insignia used by governments would be registrable by them,
rendering the analysis in Department of the Interior pointless,
as a government would be permitted to register its official
indicia even if it were akin to the flag or Great Seal.
19 We assume for the sake of argument that each of these marks
comprises the official seal of the municipality which is the
named registrant. See Resp. to Office Action, Attachment B
(Sept. 16, 2009).
Serial No. 77643857

34

Although applicant urges that the seeming
inconsistency of registering these three marks has rendered
the statute ambiguous, arguments based on alleged examining
inconsistencies have been routinely rejected:
Needless to say, this court encourages the PTO to
achieve a uniform standard for assessing
registrability of marks. Nonetheless, the Board
(and this court in its limited review) must
assess each mark on the record of public
perception submitted with the application.
Accordingly, this court finds little persuasive
value in the registrations that Nett Designs
submitted to the examiner or in the list of
registered marks Nett Designs attempted to submit
to the Board.

In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001); see also In re Rodale Inc., 80
USPQ2d 1696, 1700 (TTAB 2006) (“Although consistency in
examination is a goal of the Office, the decisions of
previous Trademark Examining Attorneys are not binding on
us, and we must decide each case based on the evidence
presented in the record before us”); In re Finisair Corp.,
78 USPQ2d 1618, 1621 (TTAB 2006); In re Wilson, 57 USPQ2d
1863 (TTAB 2001) (administrative law doctrine of “reasoned
decisionmaking” does not require consistent treatment of
all applications to register marks; each application for
registration must be considered on its own record and
merits). Simply put, the goal of consistency does not
require that we ignore a statutory directive. “Even if all
Serial No. 77643857

35

of the third-party registrations should have been refused
registration ..., such errors do not bind the USPTO to
improperly register Applicant’s marks.” In re Shinnecock
Smoke Shop, 571 F.2d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir.
2009) (citing In re Boulevard Entm't, 334 F.3d 1336, 67
USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Applicant’s arguments fare no better in this case.
The registration of three marks comprising official seals
of municipalities neither renders the statute unclear nor
provides applicant any rights based on them.20 Each
application must be examined on its own merits, based on
the administrative record.
Applicant further argues that even if the statute is
unambiguous, we should look to its legislative history

20 To the extent applicant is arguing that registration of what
appear to be official insignia of three other governmental
entities is evidence of the ambiguity of the statute, we again
disagree. As noted at the outset, this is a case of first
impression, and we have not previously had the opportunity to
offer guidance to the examining corps on this issue. We make no
comment on the validity of these third-party registrations. But
even if it could be argued that they were incorrectly registered,
we cannot tell on this record whether they were approved as a
result of incorrect legal interpretation of Trademark Act § 2(b),
as the result of inadvertent error, or for some other reason not
apparent on this record.
But whatever the explanation, the existence of three seemingly
inconsistent registrations is of little significance, and
certainly does not provide evidence that the statute is
constitutionally ambiguous. Consistency is a worthy goal, but
absolute consistency – even in well-trod areas of the law – may
be a practical impossibility.
Serial No. 77643857

36

anyway, because to do otherwise would lead to absurd and
unconstitutional results, arguing that “the Examining
Attorney’s interpretation of Section 2(b) cannot be
reconciled with the rights and obligations negotiated in
the Paris Convention or the legislative history of the
legislation that sought to implement those rights and
obligations.”
Applicant’s argument is based on a faulty premise. As
discussed above, the Paris Convention does not require
registration of applicant’s mark.21 Indeed, at the time
Congress passed the 1905 Act, the Paris Convention clearly
contemplated a prohibition on the registration of all
official insignia. The exception permitting member
countries to allow such registrations with governmental
consent appeared first in the Washington revisions of 1911
– after the passage of the 1905 Act. But notwithstanding

21 Even if the Paris Convention were self-executing, applicant, as
a U.S. national, could not claim any benefit from it, because the
Convention does not address a country’s treatment of its own
nationals. Paris Convention (Stockholm Act), art. 1(1)
(“Nationals of any country of the Union shall ... enjoy in all
the other countries of the Union the advantages that their
respective laws now grant, or may hereafter grant, to
nationals....” (emphasis added)). “The protection of a national
in his own country depends on the domestic legislation of that
country and such national will therefore not be able to claim
application of the Convention in his own country unless its
legislation entitles him to do so.” G.H.C. BODENHAUSEN, GUIDE TO THE
APPLICATION OF THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY,
30-31 (1969).
Serial No. 77643857

37

the revision to the Paris Convention a century ago, the
U.S. law has not been amended accordingly, and in fact the
1946 Act carried forward the text of the 1905 Act in this
regard with no significant change.
And even if we do consider the history of the 1905
Act, applicant has pointed to nothing approaching a clear
statement that such marks must (or even may) be registered
notwithstanding the language of the statute. Applicant
points only to general statements consistent with the
notion that the relevant portion of the 1905 Act was
adopted in whole or in part to comply with our obligations
under the then-current (1883) text of the Paris Convention,
that the central concern of Trademark Act § 2 is the
prevention of source confusion, and that the statute was
generally intended to allow registration of matter
considered a common-law trademark.22 But none of that is an
indication that Congress meant something other than what it

22 These vague and general statements were not made with specific
reference to the prohibition on registration of official
insignia. Indeed, applicant has cited no discussion in
legislative hearings, speeches, debates, committee reports, or
the like of this specific provision in the legislative history of
either Section 5 of the 1905 Act or the current Trademark Act
§ 2(b), and we have not been able to find any. The prohibition
appears to have been uncontroversial, first appearing in proposed
legislation prior to the 1905 Act, S. Rep. No. 56-20, at 127
(1900), and later in proposals leading to the 1946 Act, e.g.,
H.R. 9041, 75th Cong. § 3(b) (1938), all without significant
change and with virtually no discussion.
Serial No. 77643857

38

said, either in Section 5 of the 1905 Act or when virtually
the same language was carried forward into Section 2(b) of
the 1946 Act. Applicant has not pointed to any legislative
history indicating Congress’ specific intent regarding
Trademark Act § 2(b), and in particular, no clear
indication that it was not intended to apply to governments
seeking to register their own official insignia. The
general statements cited by applicant do not contradict the
clear language of the statute.
3. Constitutional Arguments
Finally, applicant argues that Trademark Act § 2(b) is
unconstitutional first, because it denies applicant its
Fifth Amendment right to equal protection
by creating an arbitrary distinction between
municipal corporations and other juristic persons
with regard to their rights to protection of
their insignia as commercial identifiers under
U.S. trademark law. All other juristic persons
... may, subject to other provisions of the
Lanham Act, register the “house” mark and/or logo
that is their primary identifier as a commercial
entity. ... But under the Examiner’s
interpretation of Section 2(b), the District of
Columbia, and purportedly all other municipal
corporations, would be arbitrarily denied the
right to register their official seals and flags
as house marks that otherwise would also serve as
their primary commercial identifiers and would be
thus precluded from securing the benefits of a
federally registered mark.

App. Br. at 11. Second, applicant argues that refusal of
its application unconstitutionally discriminates against it
Serial No. 77643857

39

in view of the third-party registrations of others which
have been allowed.
With respect to applicant’s first argument, we note
that Trademark Act § 2(b) does not single out applicant or
other municipal corporations. Under Section 2(b) all
persons (including governments and other juristic persons
such as applicant) are prohibited from registering “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.” All applicants are
treated equally under this provision.23 Moreover,
Section 2(b) in no way prevents applicant from registering
other marks, which are not official insignia. See Dep’t of
the Interior, 142 USPQ at 507 (construing Trademark Act
§ 2(b) narrowly, applying only to emblems of authority akin
to “the Great Seal of the United States, the Presidential
Seal, and seals of government departments”). And in regard
to applicant’s second argument, we have already explained
that inconsistent treatment by examining attorneys does not

23 Applicant calls this position taken by the examining attorney
“ridiculous.” Reply Br. at 14. Neither applicant’s argument nor
its rhetoric are convincing. Applicant contends that “[t]hird
parties have no conceivable right to register the official
insignia of municipalities; the municipalities do.” Id. But
applicant again ignores the plain language of Trademark Act
§ 2(b), which provides that no one has a right to register the
official insignia of municipalities.
Serial No. 77643857

40

allow, let alone require, us to ignore or rewrite the law
as applicant urges.
More importantly, we cannot rule on applicant’s
constitutional arguments. The Trademark Trial and Appeal
Board is an administrative tribunal, not an Article III
court, and we have no authority to declare provisions of
the Trademark Act unconstitutional. E.g., Harjo v. Pro-
Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (no
authority to declare provisions of the Trademark Act
unconstitutional nor to determine whether Trademark Act
§ 2(a) is overbroad or vague), rev'd on other grounds, 284
F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003) (subsequent
history omitted); Zirco Corp. v. Am. Tel. and Tel. Co., 21
USPQ2d 1542, 1544 (TTAB 1991) (no jurisdiction to determine
whether Trademark Act § 7(c) violates the commerce clause
of the constitution); Hawaiian Host, Inc. v. Rowntree
MacKintosh PLC, 225 USPQ 628, 630 (TTAB 1985) (no authority
to declare Trademark Act § 44(e) unconstitutional); Elec.
Storage Battery Co. v. Mine Safety Appliances Co., 143 USPQ
163, 167 (TTAB 1964) (no authority to find Trademark Act
§ 23 unconstitutional).24 Thus, to the extent applicant

24 The Court of Appeals for the Federal Circuit, which is an
Article III court, and whose decisions are binding on us, has

Serial No. 77643857

41

argues that such insignia are the equivalent of trademarks
and that under Trademark Act § 2(b) it is not treated
equally, in that other trademark owners are allowed to
register their own trademarks, we do not have the authority
to determine whether such treatment renders the section
unconstitutional.
III. Conclusion
We end up where we began – with the words of the
statute. Those words provide that registration is to be
refused if the applied-for mark “[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.” There is no dispute
(and we have no doubt) that applicant’s applied-for mark
comprises its official seal, and is therefore a “coat of

squarely rejected similar due process and equal protection
arguments:
[Applicant] was provided a full opportunity to prosecute
its applications and to appeal the examining attorney's
final rejections to the Board. The Board fully considered
[applicant’s] arguments and affirmed the rejection in a
detailed written decision setting forth the reasons for the
rejection. More importantly, [applicant] has not
demonstrated that it has a constitutionally protected
property interest in obtaining federal registration of its
... marks. There is no constitutionally protected right to
federal registration of any mark. ... Furthermore,
[applicant] was not denied equal protection. Each
application for trademark registration must be considered
on its own merits.
In re Int’l Flavors & Fragrances Inc., 51 USPQ2d 1513, 1518 (Fed.
Cir. 1999).
Serial No. 77643857

42

arms or other insignia of ... [a] State or municipality.”
Although we have considered them fully, none of applicant’s
various arguments convince us that the language of
Trademark Act § 2(b) should be given anything but its plain
and ordinary meaning, i.e., that official government
insignia must be refused registration, regardless of the
identity of the applicant.
This case is not about what the law should be or what
it might be, but what it is. We are not free to disregard
the plain meaning of the statute or to read into it an
exception that is not provided for under a plain reading of
it. The remedy that applicant seeks is a matter that might
be addressed legislatively, but we have no authority to
change the words of the statute.
We have carefully considered all of the evidence and
argument of record, including any which we have not
specifically discussed in this opinion. We conclude that
registration of the mark depicted in the subject
application is barred by Trademark Act § 2(b).

Decision: The refusal to register is AFFIRMED.