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City of Houston Seeks U.S. Supreme Court Review for the Denial of its Request to Register its Municipal Seal with the U.S. Patent and Trademark Office

On December 30, 2013, the City of Houston, Texas filed a petition for a writ of certiorari with the United States Supreme Court to challenge a decision of the United States Court of Appeals for the Federal Circuit, In re City of Houston, 731 F.3d 1326 (Fed. Cir. 2013), which upheld the denial of the City’s request to register its seal as a mark within the U.S. Patent and Trademark Office.

The City of Houston initially filed its application with the U.S. Patent and Trademark Office (USPTO) to register its official seal as a service mark. The USPTO denied the application. In re City of Houston, 2012 TTAB LEXIS 1 (Trademark Trial & App. Bd. Jan. 18, 2012). The City appealed that denial with the Trademark Trial and Appeal Board (TTAB), which affirmed the denial. On appeal, the Federal Circuit determined that the denial was appropriate because 15 USCS § 1052 barred registration of the mark and there was no exemption appropriate for the City. The Federal Circuit also noted that the City had other avenues to protect its mark, such as creating an ordinance or relying on other provisions of the Lanham Act.

In its petition for certiorari, the City argued that the history of 15 U.S.C. § 1052(b) showed that it was never intended to prohibit government entities from registering official insignia. The City asserted that the reading of the section of the statute in question, along with the definitions section in the statute, as well as taking into considering the Congressional amendments to the statute showed that the historical context was not to prohibit the registration of such a mark.

The City contended that the Federal Circuit’s affirmation of the denial of the registration of its mark created an absurd result and that the purpose of the Lanham Act instead was to protect the rights of the mark owner, which was not accomplished in this case. Finally, the City noted that Supreme Court review was appropriate because the case had a wide reaching impact for other government entities in similar positions, the City should not have to wait for Congress to act before being entitled to relief, and a proper construction of the statute was necessary.

A response is due on January 30, 2014.

The case is No. 13-784, City of Houston v. Acting Director, U.S. Patent and Trademark Office.

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