Have you heard? The state of Tennessee commissioned the creation of a new state logo. The public response has been enthusiastic, if not wholly positive.

"It cost too much!"[1] "It's too simplistic!" "It broke the state website!"[2] It's not registrable!

This experience gives us a lot of possible fodder, but let's focus on registrability.

Governor Haslam has explained that one reason the state developed a new logo was that it could not register its flag or seal. He is right. The Lanham Act prohibits federal registration of a mark that includes a true representation of a flag of the United States or any state, municipality, or foreign nation, or a simulation of such a flag. So, if Tennessee had tried to register the image below, the US PTO would have refused registration:

Instead, Tennessee hired an agency to design a totally new logo:

Notice any similarity?

Hint:

[3]

Isn't this a simulation of the Tennessee flag, you ask? As it happens, no. Although the statute prohibits registration of marks that contain true representations and simulations of flags, it does not prohibit registration of marks that contain elements of flags or flags in incomplete form. Because the stars, a key element of the Tennessee flag, are replaced by the letters TN, the new logo is not a simulation of a flag.

Nevertheless, the PTO refused registration of Tennessee's new logo, in part on the ground that the mark is "primarily geographically descriptive." "TN" stands for Tennessee, so the examining attorney asserted that the mark's primary significance is geographic, the services originate in the geographical area designated, and consumers are likely to make the association between services and the location. Such descriptive marks are not inherently distinctive and thus cannot be registered on the Principal Register.

If you've been keeping up with the local media hoopla, you have heard that the "Feds" rejected the mark and that the state is contemplating an appeal. That characterization is a bit dramatic. The PTO's June 14, 2015 office action was not a final refusal. Rather, the state had six months to respond to the office action and address the various issues raised (including the primarily geographically descriptive issue). Perhaps in an effort to quell the public outcry, the state responded swiftly.

The state could have disclaimed "TN" apart from the mark as shown and attempted to argue that the mark as a whole is not primarily geographically descriptive, and therefore registrable on the Principal Register. Other states' marks have been registered on the Principal Register with such a disclaimer:[4]

Reg. No. 1,006,524 (now canceled for non-renewal)

Reg. No. 1,289,308 (now canceled for failure to file declaration of use)

Reg. 3,460,798

In each of the foregoing cases, the geographically descriptive element of the mark shares the stage with one or more distinctive elements (such as a bucking horse and rider). Obtaining registration on the Principal Register affords mark owners valuable benefits (such as prima facie evidence of exclusive rights to use the mark nationwide, constructive notice of an exclusive ownership claim, the right to use the ® symbol, and the possibility of incontestability after five years of registration). For these reasons, registration on the Principal Register is often worth fighting for.

Of course, sometimes that fight is not easy or successful. For example, Connecticut attempted to overcome a primarily-geographically descriptive refusal for the mark below:

Reg. 3,231,725 (now canceled for failure to file declaration of use)

However, the PTO examining attorney was not persuaded by the state's arguments. Rather than push further, Connecticut relented and amended its application to seek registration on the Supplemental Register. This is what Tennessee did in the response it filed Monday. The Supplemental Register is for certain kinds of marks (like geographic and other descriptive marks) that may acquire distinctiveness over time. It offers fewer benefits compared to the Principal Register. For example, while the owner of a mark registered on the Supplemental Register can use the ® symbol, there is no presumption of ownership, validity, or exclusive rights.

We do not know what considerations the state of Tennessee weighed before filing its response. Perhaps it did not consider the option of attempting to overcome the refusal, but maybe it felt that the critics of the logo's cost would not look kindly on investment of additional resources into protecting the mark. Perhaps it looked at Connecticut's example and chose to accelerate the process.

After a month of media attention, the public's interest now appears to have waned or to have been diverted to other issues. If you have an interest in seeing the new logo in action and learning about Tennessee's other symbols, you can visit the (newly launched) website here: http://www.tn.gov/main/article/state-symbols.

[1] $46,000 for the design.

[2] The updated website launched briefly, was taken down due to malfunctions, and later went up without a hitch.

[3] Do you think Col. LeRoy Reeves received criticism that his design of the flag was too simplistic when it was adopted in 1905?

[4] Of the examples cited, one cannot tell from online information whether the first two registrants had to make arguments to overcome a primarily geographically descriptive refusal. The last registrant did not.