Hey, You Can’t Use That Logo! It Belongs to the City . . . right?
As more and more businesses flock to the Lone Star State, cities in Texas are increasingly embracing municipal branding initiatives to promote what their communities have to offer and distinguish themselves from increased competition for business investment and tourism dollars. Just as with commercial businesses, the most effective approach for municipalities to build and protect their brands is through the protections provided by both state and federal trademark laws.
A trademark can be any word, name, symbol, slogan, design, or any combination thereof, used in commerce to identify and distinguish a specific product or service. Many municipalities have developed logos or slogans to promote their unique identity. Perhaps the best-known example of a municipal trademark is the “I (Heart) New York” logo, which was created and first used in 1977 to promote New York City – which has become a world-famous identifier for the Big Apple.
In addition to serving a promotional function, trademarks are also essential for municipalities to protect their image to the public at large and (more importantly) to protect their own citizens from charlatans masquerading as city-approved do-gooders. For these reasons, municipalities around the State have been registering their logos and insignias with the USPTO for years.
However, in 2013 the Federal Circuit issued a combined decision concerning two (2) separate municipal trademark applications – which has since cast a doubt on the level of protection afforded to cities to protect their valued and long-associated monikers. In the case In re City of Houston, the Court held that neither the City of Houston nor the District of Columbia (“D.C.”) could register its official municipal seal with the USPTO. In re City of Houston, 731 F.3d 1326 (Fed. Cir. 2013). The basis for this decision was grounded in Section 2(b) of the Lanham Act, which forbids trademark registration for the “flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” 15 U.S.C. § 1052(b). This provision reflects the sentiment that such symbols are indicia of government authority that ought to be reserved solely for signifying the government, and which should not be registered as symbols of origin for commercial goods and services.
The City of Houston had argued that the statute’s purpose was to prevent public confusion as to the source of municipal goods and services whereas, by contrast, Houston’s legitimate use of its own seal would create no confusion. Houston further argued that registration would help prevent the misuse of the seal by “pirates and cheats.” See In re City of Hous., 731 F.3d at 1330. The Court rejected this position, while attempting to offer some reassurance that protection against “pirates and cheats . . . may exist” in other areas of the law. The Court also noted that municipalities could still pass local ordinances to protect their seal. The Court finally offered the oft-repeated (and probably least comforting) advice constituents hear from the judiciary; take it up with Congress.
Although bills have been introduced to allow municipalities to register their official seals, it is unclear when and if Congress will act on this issue. Additionally, although local ordinances might present municipalities with the easiest avenue to protect municipal marks, such ordinances would only be effective within the municipal city limits.
But perhaps the largest question mark left from this decision is just how far the prohibition extends. Because the issue presented in In re City of Houston involved only Houston’s and D.C.’s official city seals, the Federal Circuit did not address whether professed unofficial marks (such as city logos and slogans) were likewise forbidden from registration (and therefore, not federally protected) as forms of “other insignia[s].” However most dictionaries define the term “insignia” as “a distinguishing mark or sign” (Merriam-Webster) or as “an emblem” (American Heritage Dictionary – further defining “emblem” as “a device, symbol, or figure adopted and used as an identifying mark.”). Such definitions would seemingly include any word, symbol, or logo used to identify and distinguish a product or service as is necessary to obtain trademark protection. Thus, without more judicial analyses, cities are left with little guidance as to the level of protection afforded to certain identifying logos and symbols which are not official city seals or flags.
While there is little specific guidance from either the Lanham Act or courts, the key take-away from In re Houston is the Court’s focus on the notion that official seals are symbols of government authority – not goods or services. As such, when looking to register their logos and slogans with the USPTO, cities would be wise to emphasize the specific municipal services (or goods) such marks represent to their citizens; and certainly, avoid any and all claims that a city logo exudes regality or municipal power.
Finally, municipalities should find solace in the fact that the USPTO is not governed by prior precedent. Therefore, despite the ruling from In re City of Houston, Texas cities may still apply for federal registration without fear of penalty and obtain federal protection if the USPTO feels so inclined.
Please do not rely on this article as legal advice. We can tell you what the law is, but until we know the facts of your given situation, we cannot provide legal guidance. This website is for informational purposes and not for the purposes of providing legal advice.