County of Orange

THIS OPINION IS A

PRECEDENT OF THE TTAB

Hearing: February 24, 2022 Mailed: August 4, 2022

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re County of Orange

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Serial Nos. 87419378, 87639750

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Anna M. Vradenburgh and John Tehranian of One LLP,

for County of Orange.

Nancy L. Clarke, Trademark Examining Attorney, Law Office 1021

Mitchell Front, Managing Attorney, and

Christina Calloway, Trademark Examining Attorney, Law Office 1222

Kevin Mittler, Managing Attorney.

_____

Before Shaw, Coggins, and Allard,

Administrative Trademark Judges.

Opinion by Allard, Administrative Trademark Judge:

County of Orange (“Applicant”) seeks registration on the Principal Register of the

following mark (the “Circular Mark”):

1Trademark Examining Attorney Clarke managed the prosecution of and submitted the

appeal brief for application Serial No. 87419378.

2 Trademark Examining Attorney Calloway managed the prosecution of and submitted the

appeal brief for application Serial No. 87639750. Examining Attorney Calloway appeared at

the oral hearing and represented the United States Patent and Trademark Office (“USPTO”)

on both applications.

Serial Nos. 87419378, 87639750

for a wide range of services in seven classes, including:

• county government services, namely, providing information in the field of

government affairs, in International Class 35;

• maintaining parks, libraries, county offices, harbors and airports, namely,

building maintenance, in International Class 37;

• running and maintaining public services, namely, providing transport and

storage of waste, in International Class 39;

• county government services in the nature of education and entertainment

services, such as, providing sport facilities and libraries, in International Class

41;

• environmental testing and inspection services, evaluation and testing of real

estate for the presence of hazardous material, in International Class 42;

• providing public health care services, in International Class 44; and

• providing law enforcement services, namely, police and civil protection

services, in International Class 45.3

Applicant also applied to register the mark shown below (the “Badge Mark”):

3 Application Serial No. 87419378 (the “’378 application”) was filed on April 20, 2017, under

Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first

use anywhere since 1952 and in commerce since 1965 in all classes.

Applicant describes the mark in the application as follows: “The mark consists of a circle

surrounding the words ‘COUNTY OF ORANGE’ on the top and ‘CALIFORNIA’ on the bottom

with an image of a mountain, a field and three oranges set in the middle.” Color is not claimed

as a feature of the mark.

Applicant disclaims the exclusive right to use the wording “COUNTY OF ORANGE

CALIFORNIA.”

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for services in International Classes 35 and 41, which are similar to those identified

in Classes 35 and 41 in the application to register the Circular Mark.4 Notably, the

Badge Mark incorporates the Circular Mark in its entirety.

With regard to the application to register the Circular Mark, the Trademark

Examining Attorney refused registration of it under Trademark Act Section 2(b), 15

U.S.C. § 1052(b), because the mark consists of the insignia of a municipality.5 The

4 Application Serial No. 87639750 (the “’750 application”) was filed on October 10, 2017, under

Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first

use anywhere and in commerce since 1982 in both classes.

Applicant describes the mark in the application as follows: “The mark consists of a circle with

the image of three oranges in front of an orange grove and snow-covered mountains with the

words ‘COUNTY OF ORANGE’ in an arc above the circle and the word ‘CALIFORNIA’ below

the circle. Above the circle in a banner are the words ‘PARK RANGER’ and below the circle

are the words ‘PARKS-BEACHES’ inside of a banner. All of the aforementioned is inside of a

badge shape with the encompassed wording and design superimposed over a half wreath.

Inside of the bottom of the shield shape is a geometric shape and at the top of the shield shape

are multiple connected quadrilaterals.” Color is not claimed as a feature of the mark.

Applicant disclaims the exclusive right to use the wording “PARK RANGER PARKS-

BEACHES COUNTY OF ORANGE CALIFORNIA.”

5 March 3, 2018 Office Action at 2 in the ’378 application to register the Circular Mark.

Citations are to the record in the ’378 application, unless otherwise noted.

Page references to the application records refer to the downloadable version of documents

from the USPTO’s Trademark Status & Document Retrieval system. See, e.g., In re Peace

Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the briefs on

appeal refer to the Board’s TTABVUE docket system. The docket entry number appears

before the TTABVUE designation, and the page references, if applicable, appear after it.

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refusal was subsequently withdrawn6 but later reinstated7 and made final.8 When

the refusal was made final, Applicant appealed and requested reconsideration.9 After

the Examining Attorney denied the request for reconsideration,10 the appeal

resumed.

With regard to the application to register the Badge Mark, the Examining

Attorney refused registration of the mark under Section 2(b) of the Trademark Act,

15 U.S.C. § 1052(b).11 Applicant argued against the refusal, which was then

withdrawn, and a Notice of Publication issued.12 However, the Examining Attorney

subsequently requested that jurisdiction of the application be restored,13 and the

refusal to register under Section 2(b) was reinstated.14 When the refusal was made

final,15 Applicant appealed and requested reconsideration.16 After reconsideration

was denied,17 the appeal resumed.

6 October 31, 2019 Office Action at 2.

7 May 7, 2020 Office Action at 2-3.

8 December 17, 2020 Office Action at 2.

9 June 15, 2021 Request for Reconsideration after Final (“Req. Recon.”).

10 July 26, 2021 Denial of Req. Recon at 1-2.

11 August 17, 2018 Office Action in the ’750 application.

12 October 30, 2019 Notice of Publication in the ’750 application.

13 January 15, 2020 Administrative Response in the ’750 application.

14 January 24, 2020 Office Action in the ’750 application.

15 August 10, 2020 Office Action in the ’750 application.

16 February 5, 2021 Req. Recon in the ’750 application.

17 May 17, 2021 Denial of Req. Recon in the ’750 application.

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The appeals are fully briefed. At Applicant’s request, the appeals were

consolidated prior to oral argument.18 We now decide them in this single opinion, see

In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1085 (TTAB 2016) (Board consolidated

appeals in two applications on Examining Attorney’s request and issued a single

opinion), and affirm the refusals to register.

I. The Circular Mark of the ’378 Application

Before addressing the merits, we first address an evidentiary matter.

A. Evidentiary Matter

Applicant attaches to its appeal brief a copy of a portion of the constitution of the

State of California.19 In her brief, the Examining Attorney does not object to the new

evidence nor does she discuss it or otherwise treat it as being of record. Generally,

under such circumstances, such evidence could be excluded from consideration. In re

Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013) (refusing to consider late-filed

evidence submitted with appeal brief even though examining attorney did not

explicitly object to the evidence, because examining attorney did not discuss it or

otherwise treat it as being of record). However, in this instance, the evidence is not

subject to reasonable dispute and therefore we may take judicial notice of it.

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 704.12(a) (2022) and

cases cited therein.

18 Board Order dated December 16, 2021 appearing at 13 TTABVUE in the ’378 application,

and 25 TTABVUE in ’750 application.

19 Exhibit to Applicant’s brief (7 TTABVUE 26).

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B. Background

The California Government Code states that a county may adopt a seal, but to do

so requires the completion of a two-step process.20 First, the seal must be adopted by

the county Board of Supervisors and, second, “[a] description and impression of the

seal shall be filed in the office of the county clerk.”21 Simply put, in order for a seal to

become a county’s official seal, “it must be adopted by the Board of Supervisors, and

it must be filed with the county clerk.”22

Applicant made of record evidence that it, County of Orange, California, created

and adopted an “official” seal over a century ago.23 The official seal generally consists

of a single orange having a stem with three leaves, as shown in one of its color

iterations below:24

20 Cal. Gov’t Code § 25004 attached to the May 16, 2019 Response to Office Action at 10.

21 Id.; Declaration of Thomas A. Miller, para. 2 (“Miller Decl.”), attached to the June 15, 2021

Req. Recon. at 37.

22 Applicant’s brief, p. 9 (7 TTABVUE 10).

23 Declaration of Chris Jepsen, para. 2 (“Jepsen Decl.”) attached to the June 15, 2021 Req.

Recon. at 36; Minutes of August 5, 1889 Board of Supervisors meeting, para. 3, attached as

Exhibit 1 to the August 29, 2018 Response to Office Action at 5.

24 Jepsen Decl., paras. 2, 4 attached to the June 15, 2021 Req. Recon. at 36; Miller Decl., para.

3, attached to the June 15, 2021 Req. Recon. at 37; image of “official” seal is shown in the

November 6, 2020 Response to Office Action at 16. Additional images containing this emblem

in different colors are shown in the November 6, 2020 Response to Office Action at 67-68.

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The image of a single orange having a stem with three leaves became “the emblem

for all seals of Orange County,” excepting the seal of the Superior Court, by motion

at a meeting of the Board of Supervisors on August 5, 1889, and, according to the

minutes of that meeting, the design was proposed and “carried unanimously”.25

According to Cynthia J. Sandoval, the Board Services Specialist for the Clerk of

the Board of Supervisors for Applicant, this single orange design is and has been the

only “official” seal of the County.26 There is no other “official” seal.27 That is, the

“official” seal has not been supplanted or discarded by the County.28

The “official” seal of Applicant as compared to the proposed Circular Mark is

shown below:

Official Seal Circular Mark

25 Minutes of August 5, 1889 Board of Supervisors meeting, para. 3, attached as Exhibit 1 to

the August 29, 2018 Response to Office Action at 5.

26Declaration of Cynthia J. Sandoval, paras. 1, 3 at 11, attached to the May 16, 2019

Response to Office Action at 11.

27 Id. at para. 3. While the evidence indicates that the orange-stem-leaves design was adopted

as the emblem for all seals of Orange County (except one, i.e., the seal of the Superior Court),

and Applicant made of record multiple County seals, for purposes of these consolidated

appeals we accept arguendo Applicant’s position that the orange-stem-leaves emblem is the

one “official” seal of Orange County.

28 Jepsen Decl., para. 2, attached to the June 15, 2021 Req. Recon. at 36.

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C. Analysis

Section 2(b) of the Trademark Act, 15 U.S.C. § 1052(b), prohibits registration on

either the Principal or Supplemental Register of a mark that “[c]onsists 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, or any simulation thereof.” This

section imposes an absolute bar against registration of a mark that consists of or

contains a flag, coat of arms or other insignia, and reflects the sentiment that such

symbols are indicia of government authority that ought to be reserved for signifying

the government. In re Gov’t of Dist. of Columbia, 101 USPQ2d 1588, 1597 n.14 (TTAB

2012), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed.

Cir. 2013).

“The registration bar was not enacted to protect official prerogatives or preserve

official symbols from desecration. Rather, the bar represents a more general

determination that [government] insignia are not appropriate subjects of trademark

law at all. Trademark law concerns itself with goods and services in commerce.”

Renna v. Cnty. of Union, 88 F. Supp. 3d 310, 324 n.9 (D.N.J. 2014). As a leading

authority on trademark law explains, the absolute bar to registration under Section

2(b) is founded upon the idea that “these kinds of official governmental insignia . . .

should not be registered as symbols of origin for commercial goods and services[ ]”

because they “ought to be kept solely to signify the government”. 3 J. THOMAS

MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:78 (5th ed.

2022).

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Applicant argues that the proposed mark does not constitute “insignia” because it

is not an “official” seal of Applicant, and, even if it were, registration is not precluded

because Applicant is not a “municipality.”29 We consider each argument in turn.

1. The Circular Mark Constitutes “Insignia”

The record contains multiple definitions of the term “insignia”, which is defined

as both “a distinguishing mark or sign”30 and “an emblem.”31 “Emblem” is defined as

“a device, symbol, or figure adopted and used as an identifying mark.”32

Although the Circular Mark has not undergone the two-step process to become an

“official” seal,33 it is displayed prominently by Applicant to signify broad County of

Orange authority, records, functions and facilities. For example, the earliest display

of the proposed mark can be traced back to its appearance on the cover of a 1948 book

of County of Orange ordinances.34

Additionally, Applicant displays the proposed mark on its website. As shown

below, the proposed mark appears prominently at the top and bottom of the site (here

29 Applicant’s brief, pp. 1, 2-18 (7 TTABVUE 2, 3-19).

30MERRIAM-WEBSTER DICTIONARY (merriam-webster.com) definition attached to the

November 27, 2018 Office Action at 62.

31 AMERICAN HERITAGE DICTIONARY (ahdictionary.com) definition attached to the November

27, 2018 Office Action at 68.

32 MERRIAM-WEBSTER DICTIONARY definition accessed on May 12, 2021. The Board may take

judicial notice of dictionary definitions, including online dictionaries that exist in printed

format or have regular fixed editions, and we do so here. In re Cordua Rests. LP, 110 USPQ2d

1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).

33 Jepsen Decl., para. 3, attached to the June 15, 2021 Req. Recon. at 36.

34 Id.

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describing Applicant’s shelters35) and in each of the three email subscription boxes

on the right, as indicated by the arrows:

35 May 7, 2020 Office Action at 7-8.

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From this webpage, one can click a link to access information about other

Applicant services, such as business licenses, and to pay/view a property tax bill.36

Applicant also displays its proposed Circular Mark on its “About the Board” webpage

describing the Orange County Board of Supervisors,37 which is described as an

authoritative body charged with “oversee[ing] the management of the County

government and its many special districts. . . . [and, i]n its legislative duties, . . .

adopt[ing] ordinances, resolutions and minute orders within the limits prescribed by

State law.”38

The Circular Mark also appears on the website for the Clerk-Recorder’s office. The

Clerk-Recorder’s office manages many official government documents, including

property records, marriage licenses, and birth and death certificates, and it performs

marriage ceremonies.39

Additionally, the proposed mark is displayed prominently on signage for County

of Orange government offices, such as the Hall of Administration, which houses,

among other things, the Board of Supervisors.40 The proposed mark appears on other

signage for the Old Orange County Courthouse,41 the Hall of Records and Hall of

36 Id.

37 Id. at 20-25.

38 Id. at 21.

39 Id. at 10.

40 Id. at 11.

41 Id. at 12.

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Finance,42 the Superior Court of California,43 and the Orange County Sherriff.44 The

proposed mark is shown below on the website for the Orange County Clerk-Recorder’s

office, which itself shows the proposed mark on the Clerk-Recorder’s roadway

signage:45

42 Id. at 13-15.

43 Id. at 16.

44 Id. at 17.

45 Id. at 10.

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Below is a representative screen shot of the proposed mark used on signage to

denote County of Orange facilities, such as the Superior Court of California:46

Additionally, the proposed mark is prominently displayed on the wall of the

meeting room for the Orange County Board of Supervisors,47 as shown in this

photograph which appeared in an online article reporting on the Board of Supervisors’

activities:48

46 Id. at 16.

47 Id. at 19, 26.

48 Id. at 26.

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Still further, the proposed mark is shown on a map for the Orange County (OC)

Civic Center, which depicts the name, address and location of various government

facilities by color: Applicant facilities in orange, city facilities in green, state facilities

in blue, and federal facilities in black.49 The County of Orange facilities indicated on

this map reflect functions that are traditionally and uniquely provided by a

government: the district attorney’s office, the health care agency and vital records

office, the law library, the men’s and women’s jail, the coroner’s office, the Old County

49 Id. at 28.

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Courthouse, the Hall of Administration, and the sheriff forensic science services

building.50

Similarly, the proposed mark appears on a map showing the Orange County

General Plan – a map that illustrates land-use designations, such as rural

residential, suburban residential, urban residential, commercial and the like:51

50 Id.

51 Id. at 29.

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Serial Nos. 87419378, 87639750

Based on the foregoing discussion and evidence, we find that the prominent and

repeated display of the proposed Circular Mark to denote traditional government

records, functions, and facilities would reasonably lead members of the general public

to perceive the proposed mark as an “insignia” of Applicant within the meaning of

Section 2(b) of the Trademark Act. As shown above, the proposed mark serves as “a

distinguishing mark or sign”52 and an “emblem” of Applicant’s authority.53 Although

the proposed mark has not been adopted as an “official” seal of Applicant, this does

52 MERRIAM-WEBSTER DICTIONARY attached to the November 27, 2018 Office Action at 62.

53 AMERICAN HERITAGE DICTIONARY attached to the November 27, 2018 Office Action at 68.

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not preclude its functioning as an insignia within the meaning of Section 2(b) of the

Trademark Act. Notably, Section 2(b) does not distinguish between “official” and

“unofficial” insignia. That is, formal adoption is not required for insignia to fall under

the prohibition of Section 2(b) based on a literal reading of the Act.

Applicant argues that if the Office’s position were to prevail, it would effectively

dictate the official seal of the County of Orange, which would contradict the will of

Applicant and its governing Board of Supervisors, with whom that power is vested.54

We disagree. Our decision as to whether the proposed Circular Mark constitutes an

“insignia” under the Trademark Act has no effect on any actions by the Board of

Supervisors in its decision to adopt (or not) an official seal. The Trademark Trial and

Appeal Board is an administrative tribunal of the USPTO empowered to determine

the right of a party to register its proposed mark. Trademark Act §§ 17, 18, 20, 24, 15

U.S.C. §§ 1067, 1068, 1070, 1092. See Conolty v. Conolty O’Connor NYC LLC, 111

USPQ2d 1302, 1309 (TTAB 2014) (registration is the only issue within the Board’s

limited jurisdiction). The Board has no authority to dictate the official seal of

Applicant and does not purport to do so. With this decision, we merely determine that

the proposed mark constitutes an insignia within the meaning of Section 2(b) of the

Trademark Act for purposes of federal registration.

54 Applicant’s brief, p. 11 (7 TTABVUE 12).

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2. Applicant Is a “Municipality” for Purposes of Section 2(b) of the

Trademark Act

As previously mentioned, Section 2(b) of the Trademark Act bars registration of

an insignia “of any state or municipality of the United States ….” 15 U.S.C.

§ 1052(b) (emphasis added); see Ceccato v. Manifattura Lane Gaetano Marzotto &

Figli, S.p.A., 32 USPQ2d 1192, 1196 (TTAB 1994) (noting that “it would appear that

the reference to ‘municipality’ in the Statute is to a municipality in the United

States”).

Applicant identifies itself in the record by name as County of Orange and as a

political subdivision of the state of California.55

The Examining Attorney made of record evidence that the term “municipality”

means “[a] political unit, such as a city, town, or village, that is incorporated for local

self-government.”56 Relying on website printout evidence from ballotpedia.org, the

Examining Attorney argues that this evidence shows Orange County, California to

be a “charter county of the state which the state recognizes as its own governmental

body upon adoption of a charter ….”57 The Examining Attorney also argues that

Applicant meets the definition of “municipality,” as the evidence from Applicant’s own

website establishes that Applicant is a local governmental authority.58 Continuing,

the Examining Attorney argues that “[e]ven if applicant is not technically a

55 Application at 1.

56 November 27, 2018 Office Action at 7.

57 December 17, 2020 Office Action at 3.

58 Id. at 3.

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municipality, the evidence of record from applicant’s own website, ocgov.com,

establishes that applicant is a local governmental entity functioning as such.”59

Applicant argues that it is not a “municipality” under the definition proffered by

the Examining Attorney (as counties are not “incorporated” for local self-government,

among other reasons) or under California state law. Applicant argues that:

Despite the overwhelming authority that renders the Office’s position

untenable, the Office has nevertheless repeatedly and baldly asserted that

Orange County is a municipality. There is no logical or legal basis to

support this position, so the Office has clung to this assertion with an ill-

founded reliance on websites lacking credibility, and a misinterpretation of

the effect of a county’s adoption of a charter. Specifically, the Office cites an

unvetted, third-party website known as ballotpedia.org. The site lists

Orange County, California as a charter county of the state, which the Office

argues “recognizes as its own governmental body upon adoption of a

charter and the subsequent evidence citing Section 3, Article XI of the

California Constitution specifies the provisions for such charter counties.”

While this statement is irrelevant to whether the County of Orange is a

municipality, the Office further defines “’municipality’ as ‘a political unit,

such as a city, town, or village, incorporated for local self-government’”

and argues the “evidence from ocgov.com establishes applicant is a local

governmental agency under the common definition of ‘municipality.’” Id.

The conclusion drawn by the Office demonstrates a misunderstanding of

what is meant by the State’s recognition of a charter adopted by a county,

and the issue of ‘self-government,’ as it pertains, or does not pertain, to a

county that chooses to adopt a charter. Further, the Office misstates the

California Constitution.

A municipality is defined as “a municipal corporation: a city, town,

borough, or incorporated village.” Applicant is the County of Orange, a

county in the State of California. Unlike a city (municipality), it is not

incorporated for local self-government; rather, it is formed specifically by

legislative enactment from the State. A county is not a municipal

corporation, or any of the listed bodies identified in the definition of

municipality. Consistent with the above definition, the California Supreme

Court has made clear, “[a] county is not a corporation for municipal

purposes, within the meaning of section 7 of article XI of the constitution.”

Kahn v. Sutro, 114 Cal. 316, 319 (1886). This view is also consistent with

59 Examining Attorney’s brief (9 TTABVUE 5).

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(1) the dictionary definition offered by the Office itself; (2) the case law

which is replete with numerous reported decisions that have held that use

of the term “municipality” does not encompass counties, see, e.g., Einer v.

Rivera, 346 P3d 1197, 1204 (Ct. App. N.M. 2015) (“Although there may be

certain overlap or parallel governing principles with respect to

municipalities and counties, and our courts have at times referred to

municipalities and counties in a common way, the two are not the same.”);

and (3) leading treatises, see, e.g., 1 EUGENE MCQUILLIN, THE LAW OF

MUNICIPAL CORPORATIONS, § 2:45, at 283, 286 (3d 2010) (“[Municipal

Corporations] and counties have been declared to be separate and distinct

legal entities. . . [T]he county is not, strictly speaking, a municipal

corporation”). Municipalities are cities, and a county is—quite simply and

unequivocally—not a city.60

Even assuming, as Applicant argues, that (1) Applicant was formed by specific

legislative enactment,61 (2) Applicant chose to enact a charter on March 5, 2002, long

after Applicant was formed by specific legislative enactment,62 (3) the California

Constitution allows a county to adopt a charter after formation under certain

conditions,63 and (4) a county may not be considered a “municipality” under California

law,64 none of this impacts our decision.

For purposes of interpreting Section 2(b) of the Trademark Act, the exact nature

of the formation of Applicant, i.e., whether by specific legislative enactment or

otherwise, Applicant’s adoption or not of a charter and the timing of any such

adoption, and whether or not Applicant was “incorporated” for self-government, are

60 Applicant’s brief, p. 3-4 (7 TTABVUE 4-5) (some citations omitted).

61 Id. at 4 (7 TTABVUE 5).

62 Id.; Miller Decl., para. 5, attached to the June 15, 2021 Req. Recon. at 38. The Orange

County Charter is attached as Exhibit 15 to the June 15, 2021 Req. Recon. at 93-97.

63 Applicant’s brief, p. 4 (7 TTABVUE 5).

64 Kahn v. Sutro, 114 Cal. 316, 319 (1886) attached as Exhibit 22 attached to the June 15,

2021 Req. Recon. at 257-70.

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irrelevant. The fact remains that Applicant has some powers of self-government, as

demonstrated by the evidence above and as discussed further below.

As an initial matter, we take judicial notice of a different definition of the term

“municipality.” BLACK’S LAW DICTIONARY defines “municipality” as:

1. A city, town, or other local political entity with the powers of self-

government.65

Applicant’s own evidence acknowledges that the California Constitution itself

provides that a county may have some powers of self-government. For example, the

“California Constitution authorizes a county to make and enforce local ordinances

that do not conflict with general laws. A county also has the power to sue and be sued,

… and levy and collect taxes authorized by law.”66 Further, Section 3 of the California

65 BLACK’S LAW DICTIONARY (11th ed. 2019).

66 Exhibit 16 attached to the November 6, 2020 Response to the Office Action at 87.

Indeed, in a law review article by Jared Eigerman, the Deputy City Attorney for the City and

County of San Francisco, California, Mr. Eigerman wrote that his article “examines

California’s most basic form of local government, the county.” Eigerman, California

Counties: Second-Rate Localities or Ready-Made Regional Governments?, 26 Hastings Const.

L.Q. 621, 626 (1999) (emphasis added). Mr. Eigerman also wrote that California “counties

have their own source of power. They have a tax base and their own identifiable

constituency.” Id. at 626.

As for the distinction between cities and counties, Mr. Eigerman writes:

In 1850, after creating counties, the California Legislature acted to allow the

incorporation of cities. Today’s State Constitution commands the Legislature

to prescribe a uniform procedure for city formation and provide for city powers.

However, the State Constitution does not mandate the creation of cities, as it

does of counties. Instead, county residents must themselves petition for

incorporation as a city. California’s over 450 cities are “municipal

corporations,” formed for the purposes of local government, and, unlike

counties, they are not subdivisions of the State. The Legislature has authorized

cities to exercise powers that are often identical to those of counties. The result

is that counties are left to exercise their powers only in unincorporated portions

of their territories.

Id. at 629-30.

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Constitution provides that “For its own government, a county or city may adopt

a charter by majority vote of its electors voting on the question.”67 Thus, on its face,

it appears that the California Constitution contemplates that a county shall have

some form of local “powers of self-government.”

Further, Thomas A. Miller, Applicant’s Chief Real Estate Officer and otherwise

long-time employee of Applicant, acknowledged that Applicant elected to enact a

charter because it “was motivated by the desire to have the ability to amend a very

limited number of governing laws, including retirement and pension benefits, and

establishing a Campaign Finance and Ethics Commission.”68 Amending one’s own

governing laws is a form of “self-government” as it constitutes controlling one’s own

affairs,69 even if it is limited in some ways.

Additionally, Applicant’s own website broadly describes the functions of the Board

of Supervisors as that of “oversee[ing] the management of the County

government and its many special districts” as well as “adopt[ing] ordinances,

resolutions and minute orders within the limits prescribed by State law.”70 The Board

of Supervisor’s oversight of the management of the county government presumes that

Applicant has at least some minimum power of self-government.

67 Cal. Const., art. XI § 3(a) (emphasis added), attached to Applicant’s brief (7 TTABVUE 26).

68 Miller Decl., para. 5, attached to the June 15, 2021 Req. Recon. at 38.

69 We take judicial notice of the definition of “self-government”, which is defined as:

“1. Government controlled and directed by locals and not by outsiders. 2. Control of one’s own

affairs.” BLACK’S LAW DICTIONARY. Cordua Rests. LP, 110 USPQ2d at 1229 n.4 (Board may

take judicial notice of dictionary definitions, including online dictionaries that exist in printed

format).

70 May 7, 2020 Office Action at 21 (emphasis added).

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Consequently, based on the foregoing discussion and evidence, we find that

Applicant is a “municipality” for the limited purpose of determining whether

Applicant may register its proposed Circular Mark under Section 2(b) of the

Trademark Act.

Our finding here is consistent with the result reached by the Renna Court. Renna

v. Cnty. of Union, 88 F. Supp. 3d 310, 317-18 (D.N.J. 2014). By way of background,

Union County, a county in New Jersey, sought to register its seal (shown below) with

the USPTO:

for various services, including “County administrative services, business

administration and management of County services”.71 The USPTO refused to

register the proposed mark and the refusal was made final. Id. During the time that

the application was pending, Union County sent a cease and desist letter to Ms.

Renna, alleging infringement of its “registered” mark. Id. at 311-14.

Ms. Renna filed a declaratory judgment action in District Court, alleging that

Union County had no trademark rights with respect to its seal because the seal was

not registrable under the Trademark Act and not entitled to protection from

infringement. Id. at 316. On cross motions for summary judgment, the Renna Court

71 The application, now abandoned, was filed on July 1, 2010 and accorded Ser. No. 76703608.

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acknowledged the Union County mark was an “insignia” of a “municipality” and was

explicitly barred from registration under Section 2(b). Id. at 316-17. In citing to the

USPTO’s refusal to register the mark as insignia of a municipality under Section 2(b),

the Renna Court wrote, “Here the USPTO was on solid ground.” Id. at 317.

Applicant argues that because Applicant was “created and is governed by”

California law, California law should be treated as controlling for this issue, “as

failure to do so would constitute the Office elevating its own view of the California

governmental organization over that of the State of California itself – a sure violation

of California’s sovereignty and basic principles of federalism and unwarranted

intrusion into a matter squarely for the State of California to determine.”72

We disagree. “[I]n the absence of a plain indication to the contrary, it is to be

assumed when Congress enacts a statute that it does not intend to make its

application dependent on state law.” Dickerson v. New Banner Inst., Inc., 460 U.S.

103, 119 (1983) (cleaned up; citation omitted); see also Augustine v. Dep’t of Veterans

Affs., 429 F.3d 1334, 1340 (Fed. Cir. 2005) (same); Spina v. Dep’t of Homeland Sec.,

470 F.3d 116, 126 (2d Cir. 2006) (“unless Congress plainly manifests an intent to

incorporate diverse state laws into a federal statute, the meaning of a federal statute

should not be dependent on state law”) (cleaned up; citations omitted). Here, there is

no such indication that the statute’s meaning should be determined by reference to

state law.

72 Applicant’s brief, p. 4 (7 TTABVUE 5).

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Further, Applicant’s approach would cause the term “municipality” to be

interpreted differently depending on the nature of the laws of the state in which an

applicant is formed. This approach carried to its logical extreme could result in the

Office’s examining attorneys considering at least 50 different definitions or legislative

constructions of the term “municipality.” That is simply an unworkable solution that

could result in inconsistent application of the Trademark Act. See, e.g., Lockhart v.

Napolitano, 573 F.3d 251, 259–60 (6th Cir. 2009) (state law should not be used to

interpret terms in a federal statute if to do so would “frustrate a federal statute’s

purposes”).

3. Applicant’s Prior Registrations and Third-Party Registrations

Applicant argues that the proposed Circular Mark should be allowed to register

because Applicant has already received a registration for a mark that includes a

substantial portion of the very same mark at issue here: Reg. No. 5974753, the “’753

Registration”.73 The center portion of the mark of the ’753 Registration is nearly

identical to the center portion of the Circular Mark, as shown below, and used in

connection with, in part, similar services.74

73 A copy of the certificate of registration is attached as Exhibit 2 to the June 15, 2021 Req.

Recon. at 43-44.

74 Applicant’s brief, pp. 18-19 (7 TTABVUE 19-20). The Examining Attorney argued that the

center image of the marks was not the same and that the center image in the mark of ’753

Registration is “more stylized and more spatially compressed” than the center image in the

Circular Mark. Examining Attorney’s brief (9 TTABVUE 11). However, Applicant is adamant

that the “interior portion is exactly the same design, regardless of some perceived

compression.” Applicant’s Reply brief, p. 9 (10 TTABVUE 10).

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Mark of ’753 Registration Circular Mark

It is true that the center portion of the mark of the ’753 Registration is similar to

the center portion of the Circular Mark and that the marks share the terms “Orange”

and “County”. While we have found the Circular Mark in its entirety to be an insignia,

only part of the Circular Mark – the center portion i.e., the image only – is present in

substantial form in the mark of the ’753 Registration. It is the Circular Mark in its

entirety that we have found to be an insignia; we make no determination as to

whether the center portion alone constitutes an insignia. Moreover, much of the

rationale for the decision here rests on the perceived impression of the Circular Mark

due to the nature of its use by Applicant as shown by the evidence discussed above,

and we do not know – on this record – whether the mark of the ’753 Registration is

used or would be perceived in a comparable way. Consequently, Applicant’s

arguments that the registration of the mark of the ’753 Registration should compel

registration of the Circular Mark are not persuasive. In re Nett Designs, Inc., 236 F.3d

1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had

some characteristics similar to Nett Designs’ application, the [US]PTO’s allowance of

such prior registrations does not bind the [Trademark Trial and Appeal] Board or

this court.”); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006) (each

application for registration must be considered on its own).

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Applicant also argues that it has registered the composite word-and-design marks

OC PARKS and OC ZOO (shown below) for various recreational and entertainment

services, such as providing guided hiking tours and zoos:75

As neither of these marks was refused registration under Section 2(b) by the USPTO,

Applicant argues that the Circular Mark should similarly be allowed to register.76

We disagree. The above marks differ significantly in nature from the Circular

Mark. The evidence discussed in detail above shows that the Circular Mark is widely

used to denote traditional government records, functions, and facilities, and would be

perceived as insignia as it denotes government authority. In re U.S. Dept. of the

Interior, 142 USPQ 506, 507 (TTAB 1964). The above marks, however, are more

whimsical, and the identified services are not the type of services that are uniquely

and exclusively provided by a government — hiking tours and zoos are at least

sometimes provided by private companies and individuals, for example. We also note

that Section 2(b) does not disqualify municipalities or states from registering

trademarks. It prohibits them only from registering their flag, coat of arms, or other

insignia as trademarks.

75 Id. Copies of the certificates of registration for the OC PARKS and OC ZOO marks are

attached as Exhibit 23 to the June 15, 2021 Req. Recon. at 272-78.

76 Applicant’s brief, p. 9 (7 TTABVUE 10).

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Applicant argues that its Circular Mark should be allowed to register because it

is very similar in nature to the marks registered by, for example, the City of Rossford

and the City of Leavenworth, all of which were allowed to register for various

municipality services.77 Again, this argument is unpersuasive as the existence of

these third-party registrations does not outweigh evidence discussed in detail above

that the Circular Mark consists of or comprises an insignia of a municipality and is

therefore unregistrable. Gov’t of Dist. of Columbia, 101 USPQ2d at 1601-02 (“The

registration of three marks comprising official seals of municipalities neither renders

the statute unclear nor provides applicant any rights based on them. Each application

must be examined on its own merits, based on the administrative record.”).

D. Summary Regarding the Circular Mark of the ’378 Application

We find that the Circular Mark of the ’378 application constitutes an insignia of a

municipality and therefore affirm the refusal to register it under Section 2(b) of the

Trademark Act, 15 U.S.C. § 1052(b).

II. The Badge Mark of the ’750 Application

Before turning to the merits of the application to register the Badge Mark, we first

address an evidentiary matter.

A. Evidentiary Matters

Applicant attached to its appeal brief the following new evidence: (1) the

Declaration of Thomas A. Miller, Applicant’s Chief Real Estate Officer; (2) the

77 Id. at 22 (7 TTABVUE 23) citing June 15, 2021 Req. Recon. at 106-250.

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Declaration of Chris Jepsen, the Assistant Archivist for the Orange County Archives;

and (3) a printout of California Government Code § 25004.78 The Examining Attorney

objected to this evidence, arguing that the record should be complete prior to the

appeal.79 As mentioned above, it is well settled that the record should be complete

prior to appeal. Because the Examining Attorney has properly objected, we sustain

the objection and will not consider either of the declarations in the context of the ’750

application.80 Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In re Fallon, 2020

USPQ2d 11249, at *2 (TTAB 2020) (copy of applicant’s patent drawing first submitted

as exhibit to applicant’s brief not considered). However, we exercise our discretion

and take judicial notice of the excerpt of the California Government Code. We hasten

to add that even if the declarations were timely filed in the ’750 application, their

inclusion in the record for this application would not change the result.

B. Analysis

As mentioned above, Section 2(b) of the Trademark Act precludes registration of

a mark that “[c]onsists of or comprises … insignia of … [any] municipality ….” 15

U.S.C. § 1052(b) (emphasis added). In construing the meaning of identical “consists

of or comprises” language in Section 2(a) of the Trademark Act, the Federal Circuit

held that “[t]he word ‘comprises’ at the time of the statute’s enactment in 1905, meant

78 Exhibits 1-3 attached to Applicant’s brief (15 TTABVUE 26-33) in the ’750 application to

register the Badge Mark.

79 Examining Attorney’s brief (17 TTABVUE 7) in the ’750 application to register the Badge

Mark.

80 The same declarations were submitted timely by Applicant during prosecution of the ’378

application, and we appropriately considered them in context with that application.

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‘includes.’” In re Fox, 702 F.3d 633, 105 USPQ2d 1247, 1250 (Fed. Cir. 2012) (citation

omitted), overruled on other grounds, Iancu v. Brunetti, 588 U.S. __, 139 S. Ct. 2294,

2019 USPQ2d 232043 (2019). “Section 2(b) thus prohibits registration of a mark that

includes [an insignia] of a [municipality] or any simulation thereof.” In re Fam.

Emergency Room, LLC, 121 USPQ2d, 1886, 1889 n.2 (TTAB 2017).

Applicant admits that the Circular Mark is subsumed in its entirety by the Badge

Mark,81 as shown below:

Circular Mark Badge Mark

Having found above that the Circular Mark consists of an insignia of a

municipality, we now find that the Badge Mark comprises an insignia of a

municipality as it encompasses the Circular Mark in its entirety. Consequently,

registration is barred under Section 2(b) of the Trademark Act, 15 U.S.C. § 1052(b).

81Applicant’s Request for Consolidated Oral Hearings (24 TTABVUE 2) in the ’750

application to register the Badge Mark.

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C. Summary Regarding the Badge Mark of the ’750 Application

We find that the Badge Mark of the ’750 application comprises an insignia of a

municipality and therefore affirm the refusal to register it under Section 2(b) of the

Trademark Act, 15 U.S.C. § 1052(b).

III. Conclusion

We have carefully considered all of Applicant’s evidence and arguments. We

conclude that Applicant’s proposed marks as depicted in the subject applications

consist of or comprise insignia of a municipality, and that, as a result, registration is

barred by Trademark Act Section 2(b), 15 U.S.C. § 1052(b).82

IV. Decision

The refusals to register Applicant’s proposed marks under Trademark Act Section

2(b) are affirmed.

82 This decision applies only to the proposed marks in the subject applications 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 owned by Applicant or any third party.

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