Protecting Your Local Brand: Federal, State, and Local Strategies
Having a trademark can be an excellent tool for protecting against unwanted association and providing effective branding. Branding can provide an effective means for counties, towns, and cities to attract residents and businesses that will promote growth, revitalization, and civic pride.
However, an unwanted association could result in a local government’s brand being linked to another entity who projects an improper image that would be unfavorable to that community. As a demonstrator of goodwill and the basis of a brand, a federally registered trademark provides the ability to protect and prevent “pirates and cheats” from having your sanctioned activities (your brand) associated with a negative image.
The idea is that government entities may use their official logos to identify the connection with various municipal services, including commerce, tourism, business administration, and public utility services, and distinguish among the confusion that would come from the unauthorized use of these logos for non-municipal purposes.
No Federal Protection of Local Government Seals?
The United States Court of Appeals for the Federal Circuit has created a challenge for municipalities that wish to register their logo with the United States Patent and Trademark Office (USPTO) and provide federal protection for their official activities.
In the 2013 case In re City of Houston, the court determined that the applications for a trademark of the insignia — i.e., the official seal — belonging to Houston and Washington D.C. were correctly rejected by the USPTO under Section 2(b) of the Lanham Act. This section contains the controlling legislation for trademarks and prevents the registration of a mark that:
(C)onsists of or comprises the flag or coat of arms or other insignia of the United States, or any State or municipality, or of any foreign nation, or any simulation thereof.
The cities in City of Houston argued that the prohibition did not apply to cities attempting to register their own insignia. In addition to claiming the statute should be interpreted differently, Washington, D.C., presented three examples of when the USPTO had previously allowed a city to register its logo. Despite this, the court determined that the plain language of the statute resulted in an emphatic no, that municipalities cannot register their logo.
But subsequent history indicates the answer may not really be so simple. The Town of Wake Forest, NC, has applied to register its logo as a service mark, which has not been rejected by the USPTO and is undergoing review, and the City of Rochester, NY, successfully registered its logo as a service mark in 2018. However, in 2022 the USPTO once again rejected a service mark request for the emblem of Orange County, CA.
Alternatives to Protecting Official Logos
With the confusion around the decision in City of Houston, providing that a municipality cannot register their own insignia with the USPTO, combined with the success of other municipalities registering marks, it raises the question: What definitive action can be taken to protect a municipal seal from unwanted associations?
One strategy is to utilize the registration of slogans or landmarks associated with commercial activities that the government participates in, rather than using the official logo. The use of a slogan is differentiated from an insignia or logo because the Section 2(b) ban is focused on the nature of the mark and not the identity of the applicant or owner. This differentiating factor provides that it is not the government entity itself that is banned from registering a mark.
The Virginia Tourism Corporation, responsible for promoting tourism efforts, successfully prevented an unwanted association with a Virginia gun parts dealer by having the slogan “Virginia Is For Lovers” registered with the USPTO. The City of Portland, OR, found itself in a trademark dispute over its use of the famous “White Stag Sign” and a brewery within the city using a similar mark. While this instance ended in a settlement between the city and the brewery, the city succeeded in getting registration to protect a characteristic local landmark which is strongly associated with the city.
When used in commerce, slogans and identifiable landmarks are not the only protectable aspects available to a municipality. In 2020, there was a dispute out of New York, NY, over the use of the New York police (NYPD) and fire (FDNY) department insignias on tourist merchandise. In an unappealed opinion out of the Eastern District of New York, the court found that the registration of the NYPD and FDNY crest was not in violation of Section 2(b), because logos of subagencies, rather than the cities themselves, can be registered without violating the law. The city was ultimately successful in getting the court to agree that the sale of these marks outside of a licensing agreement was a violation of the mark and could create confusion among consumers.
State and Local Protection of Logos
Chapter 19.77 RCW governs trademarks issued by the state. A municipality can register its logo with Washington’s Office of the Secretary of State (Corporations Division) if the trademark is to be used exclusively within the state or region. Under a state registration, the owner of the mark can request an injunction from the courts to prevent imitations of the registered trademark and receive monetary damages for any profits derived from the improper use of the mark. However, state registration does not provide the same breadth of protection to bring a federal cause of action such that registration with the USPTO allows.
Straying from the strict protections of registering a mark, if a municipality is concerned about the unauthorized use of its logo, it could also enact an ordinance that adopts the logo, prohibits its/their unauthorized use, and adopts penalties for unauthorized or improper use. Various municipalities around Washington have already adopted language around the policies and restrictions regarding use of the official city logo. For example, see:
- Auburn City Code, Ch. 1.12 — City Seal and Logo
- Algona Municipal Code, Ch. 1.28 — City Logo
- Liberty Lake Ordinance No. 71 — Adopting City Logo and Protecting it Use
A local government wishing to protect their brand against unwanted associations will have to use some creativity and possibly a variety of different strategies. However, between certain federal protections available and action under state registration and local ordinances, sufficient opportunities exist to protect local brands.
MRSC is a private nonprofit organization serving local governments in Washington State. Eligible government agencies in Washington State may use our free, one-on-one Ask MRSC service to get answers to legal, policy, or financial questions.