City of Houston

Trademark Trial and Appeal Board

Jan 18, 2012

No. 77660948 (T.T.A.B. Jan. 18, 2012)

Mailed: January 18, 2012

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

In re City of Houston
________

Serial No. 77660948
Filed February 1, 2009
_______

Mark G. Chretien and Ben D. Tobor of Greenberg Traurig LLP
for applicant.

Sally Shih, Examining Attorney, Law Office 106, Mary I.
Sparrow, Managing Attorney.
_______

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

Opinion by Mermelstein, Administrative Trademark Judge:
The City of Houston, Texas seeks registration on the
Principal Register of the following mark:

for “municipal services, namely, promoting trade, commerce,
economic development and tourism; city administrative
services, namely, business administration and management of
THIS DECISION IS A
PRECEDENT OF THE TTAB
Serial No. 77660948

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municipality services,” in International Class 35; and
“municipal services, namely, providing public utilities
services,” in International Class 39.1
Registration has been finally refused on the ground
that the mark “includes a governmental insignia of the City
of Houston.” Trademark Act § 2(b), 15 U.S.C. § 1052(b).
Applicant appealed, and the appeal has been fully briefed.
This appeal raises an issue of first impression: Does
Trademark Act § 2(b) bar registration when the applicant is
a government entity seeking to register as a service mark
its own flag, coat of arms, or other insignia? We conclude
that it does, and we accordingly affirm the refusal to
register.2
I. Preliminary Issues
Applicant attached several exhibits to its opening

1 The application is based on an allegation of first use and use
in commerce as of February 1, 2009, for both classes. Applicant
has disclaimed the exclusive right to use “CITY OF HOUSTON TEXAS”
apart from the mark as shown. The application contains the
following description of the mark:
• The mark consists of a circular seal having a rope pattern
contour with a design of a plow, a locomotive and a five
pointed Texas star, and the wording "CITY OF HOUSTON TEXAS"
within the seal and a fleur de lis on each side of the term
"TEXAS".
2 We also decide today In re Gov’t of the Dist. of Columbia, __
USPQ2d __, App. No. 77643857 (TTAB Jan. 18, 2012), involving
similar legal issues.
Serial No. 77660948

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brief on appeal,3 and in its brief listed thirteen third-
party registrations in support of its argument. See App.
Br. at 10. Copies of the thirteen listed registrations
were attached to applicant’s reply brief. In her brief on
appeal, the examining attorney objected to consideration of
both the listed third-party registrations and the other
evidence attached to applicant’s brief, on the ground that
neither were timely, and that the list of registrations was
insufficient to make them of record. Ex. App. Br. at 6.
The examining attorney’s objection to the exhibits to
applicant’s opening brief is overruled. All of this
material was submitted during examination, in connection
with applicant’s June 18, 2010, response to an Office
action. While there was no need to attach additional
copies to applicant’s appeal brief, Life Zone Inc. v.
Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008)
(evidence attached to briefs will almost always be either
untimely or duplicative, and in either event should not be
filed), striking this material would be pointless as it is
already properly of record.

3 The exhibits to applicant’s brief consisted of a copy of
Trademark Act § 2 (Exh. A); a copy of the Trademark Act of 1905,
§ 5 (Exh. B); two pages of what appear to be errata pertaining to
a law journal article, Flags and Seals of Texas, 33 S. Tex. L.
Rev. 215, pp. vi-vii (1992) (Exh. C); and an excerpt from a book,
SCOT M. GUENTER, THE AMERICAN FLAG, 1777-1924, 132-153, 228-233 (1990)
(Exh. D).
Serial No. 77660948

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With respect to the list of thirteen third-party
registrations set out in applicant’s opening brief and the
copies of those registrations attached to applicant’s reply
brief, we note that those same registrations were listed4 in
applicant’s June 18, 2010, response to an Office action.
In her final refusal, the examining attorney neither
discussed applicant’s listed registrations, nor did she
inform applicant that a mere list was not a proper means to
introduce registrations into the record.5

4 Only the registration number and literal elements of the marks
appear in applicant’s lists; any design elements in the marks
were not set out in either applicant’s response to the Office
action or in applicant’s opening brief, nor is other information
such as the names of the registrants provided.
5 It is well-established that in order to make third-party
registrations properly of record, “applicant should submit copies
of the registrations themselves, or the electronic equivalent
thereof” from the USPTO’s electronic databases, now known as TARR
or TESS. In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6
(TTAB 1996) (citing In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994)). Such submissions should be made prior to appeal
or, if after appeal, pursuant to a remand of the matter to the
examining attorney for further examination. Trademark Rule
2.142(d).
Records of registrations can change over time. The
requirement for submission of copies of cited third-party
registrations provides a definitive record for the USPTO to
review, both during examination and upon appeal to the Board, and
provides clear notice to interested parties and the public of the
record upon which an administrative decision regarding
registrability was made. Similarly, the USPTO must provide a
complete record of a proceeding for any reviewing court. See 35
U.S.C. § 143 (“[T]he Director shall transmit to the United States
Court of Appeals for the Federal Circuit a certified list of the
documents comprising the record in the Patent and Trademark
Office. The court may request that the Director forward the
original or certified copies of such documents during pendency of
the appeal.”); Trademark Rule 2.191. Submission of copies of
Serial No. 77660948

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We find that the examining attorney’s failure to
advise applicant of the insufficiency of the list of
registrations when it was proffered during examination
constituted a waiver of any objection to consideration of
that list. Accordingly, we will consider the same list of
registrations set out in applicant’s opening brief “for
whatever limited probative value such evidence may have.”
In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513,
n.3 (TTAB 2001).
We reach a different conclusion with respect to the
copies of applicant’s thirteen listed third-party
registrations attached to its reply brief. “The record in
the application should be complete prior to the filing of
an appeal. The ... Board will ordinarily not consider
additional evidence filed with the Board by the appellant
or by the examiner after the appeal is filed.” Trademark
Rule 2.142(d). This is especially true with respect to
evidence submitted for the first time with a reply brief,
to which the examining attorney may not respond. In re
Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001) (“By
attempting to introduce evidence with its reply brief,
applicant has effectively shielded this material from

cited registrations enables the USPTO to fulfill its
responsibility to a reviewing court in the event of an appeal.
Serial No. 77660948

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review and response by the Examining Attorney.”). If
applicant wished to submit proper evidence of its third-
party registrations after filing its appeal, it should have
requested a remand for that purpose, which – if granted6 –
would have given the examining attorney an opportunity to
examine the new evidence and respond to it appropriately.
Trademark Rule 2.142(d). Applicant having failed to do so,
we find the evidence submitted with applicant’s reply brief
“manifestly untimely,” and we have not considered it.7 In

6 We do not suggest that such a request would have been granted.
A request for remand will only be granted upon a showing of good
cause. See generally, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”), § 1207.02 (3d ed. 2011) (and cases cited
therein). Whether good cause has been demonstrated will depend,
inter alia, on the point in the appeal at which the request is
made and the reason for the delay in submitting the evidence.
7 Applicant argues that the evidence attached to its reply brief
should be considered because the examining attorney failed to
object to its list of registrations submitted during examination.
Reply Br. at 3-4 (citing Broyhill, 60 USPQ2d at 1513 n.3).
Applicant misreads Broyhill. That case did not permit submission
of proper evidence of the listed registrations with Broyhill’s
brief, let alone its reply brief. In Broyhill, “the sole
evidence cited by applicant ... [was] a list of five third-party
registrations.” 60 USPQ2d at 1513 (emphasis added). Upon the
examining attorney’s objection in her brief to “such evidence,”
i.e., the list, we held the objection waived, id. at n.3, and
considered “applicant's evidence regarding ... third-party
registrations ... for whatever limited probative value such
evidence may have.” Id. The waiver in Broyhill was thus limited
to the evidence which was improperly submitted during examination
but not objected to – Broyhill’s list of registrations. See also
In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998).
In this case, the examining attorney’s failure to object during
examination constituted a waiver of objection only to the
evidence which was improperly submitted during examination,
namely, the list of registrations. The absence of an objection
to the list was not a waiver of any objection to the future
untimely submission of the registrations with applicant’s brief
Serial No. 77660948

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re Petroglyph Games Inc., 91 USPQ2d 1332, 1334 (TTAB 2009).
II. Interpretation of Trademark Act § 2(b)
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,[8] or any simulation thereof.

Trademark Act § 2(b); 15 U.S.C. § 1052(b).
The quoted provision is substantially similar to a
provision of the earlier Trademark Act of 1905, which read
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

or reply brief. Our consideration of these third-party
registrations is thus limited to the information which applicant
listed at page 8 of its June 18, 2010, Office action response
(and which is repeated at page 10 of its opening brief).
8 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. 77660948

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municipality or of any foreign nation....

Trademark Act of 1905, § 5, ch. 592 § 5, 33 Stat. 724
(1905) (repealed 1946).
B. Construction
As explained at greater length in District of
Columbia,
[w]e 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. 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 official insignia.

Slip op. at 12-13 (footnote omitted).
Applicant argues that “Trademark Act Section 2(b) is
silent as to whether or not countries, states, or
municipalities may register their own insignia.” App. Br.
at 6. We disagree. While it is true that Section 2(b)
does not explicitly answer applicant’s narrow question, it
clearly provides an answer because it requires refusal of
registration when the applied-for mark “consists or
comprises the flag or coat of arms or other insignia of ...
any ... municipality.” The statute is not “silent” as to
Serial No. 77660948

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whether a municipality may register its own official
insignia – it provides that all such marks are to be
refused. The specific statement that applicant finds
missing in the statutory language is simply unnecessary to
its interpretation, because the prohibition on the
registration of all official insignia resolves the question
of whether some official insignia may be registered. Under
any theory of interpretation, a categorical statement is
not incomplete or unclear merely because it does not
explicitly set out every element or subset of the category,
and the language of Trademark Act § 2(b) is no exception.
There is absolutely nothing in the statute itself which
hints of a different result.
Accordingly, we find that Trademark Act § 2(b) on its
face bars registration of all official insignia, regardless
of the identity of the applicant.
III. Applicant’s Arguments
Notwithstanding what appears to be the clear meaning
of the statutory provision at issue, applicant raises three
points in arguing for reversal of the refusal to register:
(i) the statutory language should be construed to
allow a city to register its own official seal
to identify municipal services that the city
provides to its citizens under the seal;

(ii) Applicant is seeking registration for its city
seal for use in connection with services
Serial No. 77660948

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provided by the Applicant, and not as an “emblem
of national authority”; and

(iii) at least thirteen ... other cities have been
allowed to register their city seals, with at
least one ... of these registrations issuing
after Applicant’s mark had been rejected.

App. Br. at 3.
A. Origin of Trademark Act § 2(b)
Noting that what is now Trademark Act § 2(b) first
appeared in substantially similar form as § 5 of the
Trademark Act of 1905, applicant hypothesizes that the
provision “was enacted to prevent desecration of the flag,
coat of arms or related symbols by halting the registration
of commercial trademarks that contained representations of
those marks.” App. Br. at 7. Applicant claims that “[t]he
original statute was not intended to prevent the relevant
states, countries, or municipalities from protecting their
own insignia. Instead, the purpose was the exact opposite,
to protect the states, countries, or municipalities from
having their insignia misappropriated or used for improper
commercial purposes by private individuals or entities.”
App. Br. at 8.
While we are unable to conclusively verify applicant’s
theory as to the origin of Trademark Act § 2(b),9 it makes

9 As authority for its hypothesis, applicant cites a footnote in
a law review article, Flags and Seals of Texas, 33 S. Tex. L.
Serial No. 77660948

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little difference. Even if we accept the premise that
Trademark Act § 2(b) was intended to prevent commercial
exploitation of the flag (and other official indicia), it
does not necessarily follow that Congress intended that
governments should be allowed to register their own
official insignia. Rather – assuming applicant’s premise –
it would appear that Congress instead opted to prevent

Rev. 215 (1992), which in turn cites a book, SCOT M. GUENTER, THE
AMERICAN FLAG, 1777-1924, 138-39 (1990), for the proposition that
“[t]he 1905 trademark statute was the earliest federal flag-
protection law. It was enacted to prevent desecration of the
flag, coat of arms, and related symbols by halting the
registration of commercial trademarks that contained
representations of those marks.” 33 S. Tex. L. Rev. at 238 n.
73.5; see App. Br. at 7-8.
However, the excerpts from Guenter’s book which applicant has
submitted do not entirely support applicant’s theory of the
genesis of Trademark Act § 2(b). Guenter describes the rise of
patriotic fervor in the waning years of the nineteenth century
and the rise of what he refers to as the “cult of the flag,”
fanned by nationalistic movements and the formation of hereditary
societies and other patriotic organizations. Many members of
such organizations were dismayed by the commercial exploitation
of the U.S. flag, and lobbied for both state and federal laws
against such use. Nonetheless, while these groups enjoyed some
legislative success at the state level, and some success in
courts and other tribunals, see Dist. of Columbia, slip op. n.
14, Guenter notes that they were rebuffed in their efforts to
have their desired federal legislation passed. Indeed, in the
excerpt submitted by applicant, Guenter makes no mention at all
of the Trademark Act of 1905 or the provision which ultimately
became Section 2(b) of the current Act.
Thus, while Guenter’s “cult of the flag” was quite likely
supportive of the ultimate adoption of § 5 of the Trademark Act
of 1905, applicant’s authorities provide no direct support for
the notion that Trademark Act § 2(b) originated as a flag
desecration statute. We note that the applicant in District of
Columbia presents an alternative history of Section 2(b). See
id. slip op. at 17-24. Ultimately, we find it unnecessary to
definitively determine the origins of Trademark Act § 2(b)
because it makes no difference; under either theory we would
reach the same result.
Serial No. 77660948

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commercial exploitation of such insignia by a complete ban
on registration for any use of such indicia in commerce.
That is the plain meaning of the legislation which was
enacted.
Trademark law is fundamentally about the use of marks
in commerce. If the motivation behind Section 5 of the
Trademark Act of 1905 was indeed concern over commercial
exploitation of the flag and other official insignia, it
would have been logical to ban all registrations of
official insignia, even if the commercial use involved is
by the government itself.
While applicant might be of the opinion that Congress
employed a larger hammer than necessary to hit that
particular nail, we are not in the business of rewriting
statutes to more narrowly effect what we suppose might have
been Congress’ intention. We must presume, of course, that
Congress knew what it was doing when it drafted Section 5
of the Trademark Act of 1905 and later Section 2(b) of the
1946 Act. United States v. Goldenberg, 168 U.S. 95, 102-03
(1897). And if that statutory language is clear – as we
find it to be in this case – there is a “strong presumption
that the plain language of the statute[] expresses
congressional intent [which] is rebutted only in rare and
Serial No. 77660948

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exceptional circumstances.”10 United States v. Clintwood
Elkhorn Mining Co., 553 U.S. 1, 11 (2008).
In this case, the statutory language at issue clearly
indicates that all marks which “[c]onsist[] of or
comprise[] 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” are to be
refused registration. The statute does not provide for any
exception to the rule, although one could easily have been
written had it been intended to apply. We accordingly
presume that Congress intended the prohibition on
registration of official insignia to apply universally,
without regard to the identity of the applicant.
B. Applicant’s Use of its Official Seal
Applicant emphasizes that it “is not seeking to
register its City Seal as an ‘emblem of authority.’
Instead, it is seeking to register the City Seal in
connection with specific municipal services that it
provides to its citizens via its various City departments.”

10 We note that applicant has cited no discussion in legislative
hearings, speeches, committee reports, or the like of this
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. Whatever may be argued about the role of
legislative history in interpreting statutory language, there is
nothing in the history of this legislation which clearly suggests
an interpretation of Trademark Act § 2(b) contrary to its clear
language.
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App. Br. at 9. Applicant argues that “insignia which are
‘merely used to identify a service or facility of the
Government’ do not fall within the general prohibitions of
the statute.” Id. (citing In re United States Dep’t of the
Interior, 142 USPQ 506 (TTAB 1964)).
Applicant seeks registration of its official seal for
use in connection with “municipal services, namely,
promoting trade, commerce, economic development and
tourism; city administrative services, namely, business
administration and management of municipality services,” in
International Class 35; and “municipal services, namely,
providing public utilities services,” in International
Class 39. The application thus identifies a number of
activities in which governments typically engage.11
However, applicant misreads Department of the Interior to
the extent it finds support in that case for the contention
that the nature of the goods and services identified in the
application is a factor in determining whether Trademark
Act § 2(b) prohibits registration of official insignia.
Neither the statute nor Department of the Interior makes
such a distinction.

11 The services recited in this case differ in this regard from
the goods identified in the application at issue in District of
Columbia. In that case, the identified goods appear to be in the
nature of commercial merchandise. Dist. of Columbia, slip op. at
2-3.
Serial No. 77660948

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In re U.S. Department of the Interior involved an
application to register the following mark used by the
Department in connection with
(1) Operation and maintenance of recreational and
educational facilities in connection with parks,
monuments, camp sites, trails, museums and similar
institutions, and (2) Making available to the public
publications and other informational material in
connection with the activities of (1).

Registration was refused under Trademark Act § 2(b).
On appeal, “[t]he question for determination ... [was]
whether the insignia of the ‘National Park Service,’ here
sought to be registered, falls within the category of ‘or
other insignia’ prohibited by Section 2(b).” Id., 142 USPQ
at 507. After analyzing the text of the statute, the Board
construed Trademark Act § 2(b) to prohibit registration of
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).

Serial No. 77660948

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Id.
The Board found that the applied-for mark was not
similar in kind to emblems of governmental authority such
as the flag or Great Seal of the United States. The proper
analysis thus focuses on the nature of the mark at issue.
Nonetheless, applicant seizes on the final sentence of
the case, which directly follows the language quoted above:
“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.” Id. Applicant contends that “it is seeking to
register the City Seal in connection with specific
municipal services that it provides to its citizens. ...
These permitted uses do not fall within the narrowly
defined prohibitions of the statute set forth in the case
law.” App. Br. at 9.
We do not construe the final sentence in Department of
the Interior as indicating that the applicability of
Trademark Act § 2(b) to official insignia depends on the
goods or services recited in the application. The statute
says no such thing, and the panel in Department of the
Interior did not even hint at any authority or rationale
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for such a rule. Indeed, until this last sentence, the
decision did not in any way discuss the relevance of the
goods or services to the determination of whether
registration is prohibited under Trademark Act § 2(b). The
decision focused instead on the mark itself and whether it
was akin to “the flag or coat of arms ... of the United
States.”
It is thus the nature and status of the applied-for
mark that invokes the prohibition of § 2(b). We understand
the final sentence of Department of the Interior to simply
recognize that sometimes resort to consideration of the use
of the applied-for mark by the relevant government entity
may be necessary in determining whether the mark is in fact
“the flag or coat of arms or other insignia” of that
government. Although Department of the Interior makes
clear that the statute prohibits registration of “emblems
of ... authority” on a par with the Great Seal of the
United States, the question of whether an applied-for
trademark meets that definition may not always be
determined simply by looking at the mark itself. Thus if
the evidence demonstrates that the relevant authority uses
the applied-for mark as an official insignia, it should be
accorded such status under the Trademark Act. However, if
the applied-for mark is never used as an emblem of
Serial No. 77660948

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authority, but instead is merely used to identify some
service or program provided by a government agency, the
mark would not fall within the meaning of “other insignia”
and should not be refused under Trademark Act § 2(b).12 But
however the conclusion is reached, once it is determined
that the applied-for mark is the official insignia of “the
United States, ... any state or municipality, or of any
foreign nation,” its registration is prohibited, regardless
of the specific goods or services for which registration is
sought.
In this case, we are constrained to determine that the
City of Houston’s applied-for mark is such an official
insignia, barred from registration under Section 2(b).
Applicant clearly admitted throughout examination and in
its briefs that the subject of its application is the
city’s official seal. E.g., Application (Feb. 1, 2009)
(“The mark consists of the official seal of the City of
Houston, Texas.”); Req. for Recon. at 2 (June 18, 2010)
(“Applicant's mark is the City Seal ... for the City of
Houston, Texas”); App. Br. at 3 (“Applicant is seeking

12 In Department of the Interior, the mark was actually used in
connection with the provision of recreational and educational
services in public parks, and not as something akin to an
official seal of the government. The Board took pains to
emphasize that nothing in Trademark Act § 2(b) should be read as
a general prohibition on the registration of any trademarks by
governments. Dep’t of the Interior, 142 USPQ at 506-07.
Serial No. 77660948

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registration for its city seal”). Therefore, in
determining whether the subject application is for a mark
described in Section 2(b), we have no need to examine
applicant’s actual use of its seal, or a statute or other
evidence of whether applicant adopted the applied-for mark
as an official “emblem of authority.”13
Finally, we think it obvious that whether the mark is
an official insignia is not determined (or limited) by the
goods or services for which application is sought. Thus,
the fact that applicant seeks registration for use of its
official seal in connection with certain identified
services is not particularly probative of whether the seal
is, in fact, a “flag or coat of arms or other insignia”
under the statute. Once the status of the mark as an
official insignia is established, it does not matter what
else the mark may be used for, and Trademark Act § 2(b)
cannot be avoided simply by limiting the application to
certain goods or services.14 Trademark Act § 2(b) requires

13 We further note that there is no dispute that applicant is a
“municipality,” within the meaning of Trademark Act § 2(b). A
“municipality” is “[a] legally incorporated or duly authorized
association of inhabitants of limited area for local governmental
or other public purposes.” BLACK’S LAW DICTIONARY, 918 (5th ed.
1979), of which we take judicial notice.
14 A contrary rule would permit precisely the type of harm that
applicant argues Trademark Act § 2(b) was intended to prevent,
namely, commercialization of the government’s emblems of
authority. By way of example, under the statute the Great Seal
of the United States is not registrable as a trademark, even by
Serial No. 77660948

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refusal of registration when the mark “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,” regardless of the particular goods or
services for which registration is sought.
C. Allegedly Inconsistent Registrations
Finally, we consider applicant’s argument that
registration should be allowed because “at least thirteen
... other cities have been allowed to register their city
seals.”
Applicant submitted a list of thirteen registrations
in support of this argument. Although we will consider
this evidence, it has very little probative value. As
noted, applicant’s list consists only of marks and
registration numbers. This evidence is incomplete, at
best, as it sets out only the wording in the listed marks,
without displaying the owner of the registration, any
design elements, disclaimers, or other possibly relevant
data. More importantly, however, there is no evidence in
this record that the listed registrations are, in fact, the
official seals of the cities mentioned in the marks.

the United States government, and it makes no difference at all
whether registration is sought for the services of “managing a
national government” or “operation of recreational facilities in
parks” or – as in the parallel case – “cuff links, mugs, and
sweat pants.”
Serial No. 77660948

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Except to the extent prohibited by Trademark Act § 2(b),
cities are clearly permitted to apply for and own
trademarks, as are states and national governments. Dep’t
of the Interior, 142 USPQ at 506 (“the granting of
trademark and service mark registrations to state and
governmental agencies does not appear to be contrary to the
established policy of the Patent [and Trademark] Office”).
We cannot presume simply from the fact that the marks
include words such as CITY OF FULLERTON CALIFORNIA, Reg.
No. 2,877,383, or CITY OF MIAMISBURG OHIO’S STAR CITY, Reg.
No. 2,522,124, that the listed marks are in fact the
official emblems of authority of the named cities.
But even if we were to assume that all of the listed
registrations are inconsistent with the examining
attorney’s refusal in this case, reversal is not required.
As noted at the outset, the issue we decide today is one of
first impression with the Board. As applicant recognizes,
App. Br. at 11, it is well-settled that we are not bound by
the decisions of examining attorneys, nor do applicants
have a substantive right to consistency. 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
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22

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 applications to
register marks; each application for registration must be
considered on its own record and merits).
Nonetheless, applicant attempts to limit this
principle to “issues involving subjective determinations.”
[T]he present case is not one that hinges on a
subjective determination of, for example,
likelihood of confusion, where previous decisions
with different facts may not be directly
applicable and reliance on the findings of these
previous decisions would not be warranted.
Instead, this case deals with the non-subjective,
straight-forward application of a statute, which
should be applied uniformly to all applicants.

App. Br. at 11.
We agree, of course, that a legal determination such
as whether Trademark Act § 2(b) applies to applicant’s
attempt to register its own official seal should be applied
consistently. However, our obligation is to make such a
decision correctly, and we may not abdicate that
responsibility to examining attorneys who made
determinations in earlier applications. To the contrary,
it is the Board which must correct examining attorneys if
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23

they have applied an incorrect legal standard in a case
that comes before us.15 The third-party registrations noted
by applicant here are not at issue, and in any event, there
is far too little information on this record to determine
anything relevant about their registration.16 But as the
Court of Appeals for the Federal Circuit noted, “[e]ven if
all 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)).
IV. Conclusion
We have carefully considered all of applicant’s
evidence and arguments in favor of registration.
Nonetheless, for the reasons we have discussed, we conclude
that Trademark Act § 2(b) prohibits without exception the
registration of marks which “[c]onsist[] of or comprise[]
the flag or coat of arms or other insignia of the United
States, or of any State or municipality, or of any foreign

15 Indeed, we expect that a clear decision on this legal issue
will promote the goal of consistency. As noted, we have not
heretofore had the occasion to rule on this issue.
16 Only the mark in the subject application is before us today.
Nothing in this decision should be read as an opinion on the
registrability of any other mark or the validity of any
registration noted by applicant.
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24

nation.” We further conclude that applicant’s official
seal as depicted in the subject application is such a mark,
and that registration is therefore barred by statute.
Applicant argues that Congress did not intend such a
result, although it provides no clear indication that
Congress intended anything other than what the statute
clearly provides. Because we find the language of
Trademark Act § 2(b) clear on the question presented, we
have neither the authority nor a basis to deviate from its
terms. Applicant and others in its position are free, of
course, to pursue a legislative solution, but we are
without authority to write an exception into the statute.

Decision: The refusal to register is AFFIRMED.