IN SUPPORT OF AMENDMENTS TO SECTION 2(B) OF THE LANHAM ACT TO PERMIT MUNICIPALITIES TO REGISTER THEIR FLAGS, COATS OF ARMS, AND OTHER OFFICIAL INSIGNIA

WHEREAS, consistent with its earlier support of a comprehensive plan to combat global piracy and counterfeiting of goods, the U.S. Conference of Mayors recognizes the importance and value of intellectual property and the impact that the counterfeiting of intellectual property and goods (e.g., the loss of tax revenue, money spent on enforcement and the relationship between counterfeit goods and gang activity) has on local government.

WHEREAS, according to the March 2012 report prepared by the Department of Commerce and the United States Patent and Trademark Office (“2012 IP Report”), IP-intensive industries accounted for about $5.06 trillion in value added, or 34.8 percent of U.S. gross domestic product (GDP), in 2010 and directly and indirectly supported a total of 40.0 million jobs, or 27.7 percent of all jobs in the economy.

WHEREAS, as further stated in the 2012 IP Report:  “The granting and protection of intellectual property rights is vital to promoting innovation and creativity and is an essential element of our free-enterprise, market-based system.  Patents, trademarks, and copyrights are the principal means used to establish ownership of inventions and creative ideas in their various forms, providing a legal foundation to generate tangible benefits from innovation for companies, workers and consumers.”

WHEREAS, municipal corporations, like U.S. companies, are dedicated to economic growth, and there is no rational basis for preventing municipalities from registering their own official insignia as trademarks in the same manner that other U.S. companies are permitted to register their comparable primary corporate trademarks.

WHEREAS, notwithstanding the above, the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office recently held in two cases of first impression that Section 2(b) of the Lanham Act, 15 U.S.C. § 1052(b), strictly prohibits municipalities from registering their own official insignia as trademarks, see In re The Government of the District of Columbia, No. 77643857 and In re City of Houston, No. 77660948 (both cases were decided on January 6, 2012).  (Section 2 of the Lanham Act is attached in Annex A.)

WHEREAS, the central basis for the TTAB’s decision was that Section 2(b) unambiguously prohibits all applicants from obtaining marks which are or include the coats of arms or other insignia of any municipality and “offers no exception to the prohibition on registration, even when a government entity applies to register its own official insignia.” 

WHEREAS, without the ability to register their official insignia, municipalities are not able to obtain the legal rights, benefits and remedies that are afforded to other companies who are able to secure federal trademark registration on the Principal Register for their comparable primary corporate trademarks, including (i) nationwide constructive use rights that would automatically give municipalities rights outside their immediate geographic areas and (ii) the ability to record a federal registration of their official insignia with U.S. Customs to prevent the importation of infringing and counterfeit goods.

WHEREAS, municipalities are, and will continue to be, adversely affected by the TTAB’s interpretation of Section 2(b), including being unable to rely on the rights, benefits, and remedies afforded under the Lanham Act to assist municipalities in preventing the importation and sale of unlawful counterfeit goods that compete directly with those sold by municipalities to generate much needed revenue, such illegal uses often being tied to other criminal activity and impersonation of law enforcement authorities.

NOW, THEREFORE, BE IT RESOLVED that members of the U.S. Conference of Mayors support the efforts of municipalities to seek to amend Section 2(b) of the Lanham Act to clarify, consistent with the rights and obligations negotiated in the Paris Convention, that municipalities have the right to seek federal trademark registration of their own official insignia. 

BE IT FURTHER RESOLVED that the U.S. Conference of Mayors will assist in calling upon Congress to pass needed federal legislation designed to permit municipalities to obtain federal trademark registrations on the Principal Register of their own official insignia so that they may obtain the rights, benefits, and remedies under the Lanham Act to combat profit-making entities and criminal enterprises who willfully and knowingly steal intellectual property, with little or no regard for the costs in jobs, creativity and revenue for cities across America.