Can a city government register its own promotional slogan as a trademark in Maryland?

Plain-English summary

Maryland's Secretary of State asked the Attorney General for guidance after her office initially rejected trademark applications filed by the Mayor and City Council of Baltimore for the promotional slogan "Baltimore's Best/Baltimore is Best" and a stylized "Baltimore" logo used by the Convention Bureau, on the theory that "municipalities are not eligible applicants" under the Maryland Trademark Law. Two legal questions were presented: whether a government entity like a city even counts as a "person" who can apply to register a mark, and whether the City's slogan was so tied to a geographic place name that the law would automatically disqualify it from registration.

The opinion answered both questions in the City's favor. On the "person" question, it acknowledged Maryland's general rule that statutory references to "person" exclude the government unless the legislature clearly meant to include it, but found that rule inapplicable here because its underlying purpose, protecting a government's sovereign powers and immunities, has no role to play when a government is simply pursuing a commercial or promotional benefit the same way a private business would, not exercising or risking any sovereign authority. The opinion also pointed out that both the federal Lanham Act and other states following the same model trademark law had long treated governmental bodies as eligible registrants, supporting the same reading in Maryland. On the geographic-descriptiveness question, the opinion found that while "Baltimore's Best/Baltimore is Best" obviously evokes the city's name, the slogan was not meant to identify where goods came from but to build civic pride and promote tourism, and the City's use of the phrase since 1976 gave it the kind of distinctive "secondary meaning" that Maryland law lets the Secretary of State treat as overcoming an otherwise-geographic name.

Currency note

This opinion was issued in 1982. Subsequent statutory amendments, court decisions, or later AG opinions may have changed the analysis. Treat this page as historical context, not current legal advice. Verify current law before relying on any specific rule, deadline, or remedy mentioned here.

The opinion applied Article 41 of the Maryland Code (the state trademark statute in effect in 1982), the federal Lanham Act as it existed at that time, and Maryland and federal trademark case law through 1982. Maryland's trademark statute has since been recodified (Article 41 was reorganized into the Business Regulation Article), and federal trademark law, including standards for geographically descriptive marks, has continued to evolve. Anyone with a current question about registering a government entity's mark, or about geographically descriptive trademarks, should consult the current Maryland Business Regulation Article and current Lanham Act case law rather than relying on this 1982 analysis.

Common questions

Why would a state trademark law exclude the government from the definition of "person" in the first place?
The opinion explained that Maryland courts have a general interpretive rule that statutory references to "person" do not include the state or its subdivisions unless the legislature clearly meant to include them, but that this rule exists specifically to protect government sovereignty and immunity from being unintentionally waived or limited by a general statute. Where applying a statute to the government would not touch its sovereign powers at all, the reason for the exclusionary rule disappears.

How does registering a promotional slogan not implicate the City's sovereign powers?
The opinion reasoned that Baltimore, in applying for trademark registration, was acting exactly like a private company would, seeking a proprietary, commercial benefit (protecting a slogan used on merchandise and promotional materials), not exercising or risking any governmental authority, waiving any immunity, or incurring any liability. Because nothing about the sovereign side of city government was at stake, the opinion concluded the usual exclusionary reading of "person" should not apply.

Doesn't "Baltimore's Best" just describe where a product comes from, which trademark law normally won't protect?
The opinion agreed that a purely geographic term generally cannot be exclusively claimed as a trademark, since that would let one business monopolize a place name everyone else in that area has an equal right to use. But it found the City's slogan was not really being used to describe the geographic origin of goods; it was used to promote civic pride, tourism, and the City's own recognition awards program, and had been used consistently in that promotional sense since 1976, which the opinion treated as the kind of "secondary meaning" that can make an otherwise geographic phrase registrable.

Would it have mattered if the City tried to register "Baltimore's Best" and "Baltimore is Best" as two separate slogans instead of one combined phrase?
The opinion flagged this as a harder question it did not need to resolve. It noted that "Baltimore's Best" standing alone consists of ordinary descriptive words, part geographic and part a common qualitative claim like "best," that would likely be much more difficult to register on its own, while "Baltimore is Best" might be independently registrable as a distinctive claim rather than a product description. Because the City sought registration of the two phrases only as a single combined slogan, the opinion did not have to decide how each phrase would fare separately.

Background and statutory framework

In February 1982, the Mayor and City Council of Baltimore applied under the Maryland Trademark Law to register the combined slogan "Baltimore's Best/Baltimore is Best" for use on promotional items, clothing, bags, and similar merchandise, and as a service mark for the City's promotional and cultural activities, including a biannual civic-pride awards program, based on use dating to 1976. In March 1982, the City filed a second application for a stylized rendering of the word "Baltimore" accompanied by a sailboat-and-skyline logo, used by the Baltimore Civic Center and Convention Bureau on stationery and promotional materials since 1978. The Secretary of State's office initially rejected both applications on preliminary advice that municipalities were not eligible applicants, and after the City objected, the Secretary sought the Attorney General's opinion.

On the "person" question, the opinion started from Article 41, §92(a) of the Maryland Code, which lets "any person who adopts and uses a mark in the State" apply for registration, and §90(b), which defines "person" as "any individual, firm, partnership, corporation, association, union or other organization," a definition that does not expressly mention governmental entities and closely tracks the Model State Trademark Bill and the federal Lanham Act's own definitions. The opinion acknowledged the Court of Appeals' general rule that "person" in a statute excludes the state and its subdivisions absent a clear legislative intent to include them, but found persuasive authority, both under the Lanham Act (where federal trademark examiners and Trademark Trial and Appeal Board decisions treat nations, states, and municipalities as eligible registrants) and under other states' Model State Bill statutes (where agencies in New York, Connecticut, and Indiana, among others, had successfully registered marks like "I Love New York" and "Wander Indiana"), that a comparable inclusive reading was intended in Maryland, particularly given the rule that when Maryland copies a provision from other jurisdictions' laws, those jurisdictions' construction of the same language is persuasive.

The opinion then explained why the general exclusionary rule for "person" should not control here. Drawing on Maryland and out-of-state case law, it explained the rule exists to prevent an unintended erosion of governmental sovereignty or immunity, and does not apply where allowing the government to be treated as a "person" would not impair any sovereign power, particularly where the government is acting in a proprietary or commercial capacity similar to a private party. Because registering a trademark or service mark for promotional and commercial purposes does not touch any sovereign function, waive immunity, or create liability, the opinion concluded Baltimore City (and by extension other governmental entities) qualifies as a "person" eligible to register a mark under Maryland law.

On the geographic-descriptiveness question, the opinion turned to Article 41, §91(5), which bars registering a mark "primarily geographically descriptive" of the underlying goods or services, a rule meant to keep any single business from monopolizing a common geographic term, unless the mark has acquired a distinctive "secondary meaning," which the statute allows the Secretary of State to infer from five years of continuous use. Reviewing Maryland common law cases on geographic trade names and federal Trademark Trial and Appeal Board standards, the opinion concluded that while "Baltimore's Best/Baltimore is Best" plainly evokes Baltimore as a place, the slogan's purpose was not to describe where the underlying goods came from but to promote civic pride and tourism, and the City's continuous use of the combined phrase since 1976, along with its statutory representation that no one else had a conflicting right to use it, supported treating the slogan as having acquired the kind of secondary meaning that overcomes the geographic-descriptiveness bar. The opinion reached the same conclusion for the Convention Bureau's sailboat-and-skyline logo, since the City sought to register the distinctive logo design, not the word "Baltimore" by itself.

Citations

Statutes:

• Article 41, §§90 through 103 of the Maryland Code
• Chapter 357, Laws of Maryland 1892
• Chapter 63, Laws of Maryland 1954
• 15 U.S.C. §§1051 through 1127
• Article 41, §102 of the Maryland Code
• Article 41, §92(a) of the Maryland Code
• Article 41, §90(b) of the Maryland Code
• N.Y. Gen. Bus. Law §360(b)
• Del. Code Ann. tit. 6, §3302(3)
• 15 U.S.C. §1051(a)
• 15 U.S.C. §1127
• 15 U.S.C. §1115
• Chapter 751, Laws of Maryland 1967
• 15 U.S.C. §1054
• Article 41, §91(5) of the Maryland Code
• Article 41, §92(a)(4) of the Maryland Code

Cases:

• A. & H. Transp. Co. v. Save Way Stations, 214 Md. 325, 331-32 (1957)
• Unnamed Physician v. Commission on Medical Discipline, 285 Md. 1, 12 (1979)
• St. Joseph Hospital v. Quinn, 241 Md. 371, 377 (1965)
• Unsatisfied Claim and Judgment Fund v. Hamilton, 256 Md. 56, 59 (1969)
• Saunders v. Unemployment Compensation Bd., 188 Md. 677, 688 (1947)
• City of Los Angeles v. City of San Fernando, 537 P.2d 1250, 1306-07 (Cal. 1975)
• In re Public Parking Auth. of Pittsburgh, 76 A.2d 620 (Pa. 1950)
• Mayor and City Council of Baltimore v. Baltimore Gas and Elec. Co., 232 Md. 123 (1963)
• United States v. Coumantaros, 165 F.Supp. 695, 698 (D.Md. 1958)
• State Comm'n on Human Relations v. Baltimore, 208 Md. 35, 39 (1977)
• Harden v. Mass Transit Admin., 277 Md. 399, 408 (1976)
• Baltimore Bedding Corp. v. Moses, 182 Md. 229 (1943)
• Edmondson Village Theatre v. Einbinder, 208 Md. 38 (1955)
• La Republique Francaise v. Saratoga Vichy Spring Co., 191 U.S. 427, 24 S.Ct. 145, 48 L.Ed. 247
• Saxlehner v. Wagner, 216 U.S. 375, 30 S.Ct. 198, 54 L.Ed. 525
• In re Charles S. Loeb Pipes, Inc., 190 U.S.P.Q. 238, 244 (TT&A Bd. 1975)
• Nebraska Consolidated Mills v. Shawnee Milling Co., 99 F.Supp. 70 (W.D. Okla. 1951), aff'd, 198 F.2d 36 (10th Cir. 1952)
• In re United States Department of the Interior, 142 U.S.P.Q. 506 (TT&A Bd. 1964)
• National Aeronautics and Space Administration v. Record Chemical Co., Inc., 185 U.S.P.Q. 563 (TT&A Bd. 1975)

Source

• Landing page: https://oag.maryland.gov/resources-info/Pages/attorney-general%E2%80%99s-opinions.aspx
• Original PDF: https://oag.maryland.gov/resources-info/Documents/pdfs/Opinions/1982/Volume67_1982.pdf

Original opinion text

Best-effort transcription from a scanned PDF. Minor errors may remain, the linked PDF is authoritative.

TRADEMARKS

"Persons" Eligible to Register—"Geographically Descriptive" Marks/Secondary Meaning—"Person" Includes Governmental Entity—City Slogan "Baltimore's Best/Baltimore is Best" is Registrable

November 15, 1982

The Honorable Patricia G. Holtz
Secretary of State

You have requested our opinion on whether, under the Maryland Trademark Law, your Office may register as trade and services marks certain submissions made by Baltimore City. Specifically, you ask: (1) whether a governmental entity, here, the Mayor and City Council of Baltimore, is a "person" eligible under that law to apply for registration of a mark; and (2) whether the City's submissions [particularly, the slogan "Baltimore's Best/Baltimore is Best"] are "primarily geographically descriptive" of the goods or services in question and, as such, statutorily disqualified from registration.

For the reasons given below, it is our opinion that: (1) governmental entities such as Baltimore City are "persons" entitled to apply for the registration of trade and service marks; and (2) the specific marks submitted by the City convey a distinctive secondary meaning and, consequently, are not disqualified from registration.

I
Background of the Controversy

In February, 1982, the Mayor and City Council of Baltimore filed an application under the Maryland Trademark Law for registration of the conjoined slogan "Baltimore's Best/Baltimore is Best".1 Trademark registration was sought in connection with the slogan's use on "promotional items, clothes, bags, ties, stickers and manufactured items"; and the slogan was described in the application as having been used by the City and its constituent agencies since 1976 "to promote various educational and cultural activities as well as to promote tourism". A service mark was also sought for the same slogan, as used in connection with "various promotional services and cultural activities of the City of Baltimore", including a biannual awards program designed to stimulate civic pride and community cooperation.

In March, 1982, the City submitted an additional service mark application for a stylized version of the word "Baltimore", preceded by a logo of a sailboat on water in front of the Baltimore skyline. According to the application, the mark is used for advertising and promotional activities on behalf of the Baltimore Civic Center and Convention Bureau, and it has been so used since October, 1978, on "Convention Bureau stationery, business cards, visual displays and various other documents distributed by the Bureau".

After receipt of these applications, the Office of Secretary of State, on preliminary advice of counsel, advised the City that the applications were being rejected because "municipalities are not eligible applicants" under the Maryland Trademark Law. After the City expressed its disagreement with this determination, your Office sought our opinion on the matter.

II
The Maryland Trademark Law

Ever since 1892, Maryland has provided a mechanism for the registration of trademarks used in this State. See Chapter 357, Laws of Maryland 1892. However, the General Assembly did not adopt a modern scheme of trademark registration until 1954. See Chapter 63, Laws of Maryland 1954. The Maryland Trademark Law is now codified in Article 41, §§90 through 103 of the Maryland Code.

The 1954 law followed two notable events in the history of trademark protection and registration: (1) the enactment by Congress in 1946 of the Lanham Trademark Act, 15 U.S.C. §§1051 through 1127; and (2) the approval of a "Model State Trademark Bill" in 1950 by the National Association of Secretaries of State and the Drafting Committee of the Council of State Governments. The Lanham Act was intended, among other things, to protect the use in interstate commerce of trade and service marks through a system of federal registration and to prevent interference with registered marks by "state or territorial legislation". See 15 U.S.C. §1127. The Model State Bill, at least in part an outgrowth of the federal act, was intended to promote uniform state legislation by providing a system for registering marks used within a particular state. See Sacks and Stokes, Statutory Treatment of the Model State Trademark Bill in the Areas of Service Marks and Conflicting Federal Registrations, 127 Geo. Wash. L. Rev. 353, 354 (1959).

State trademark registration laws patterned after the Model State Bill have been adopted with some variations in 46 jurisdictions. In Maryland, as elsewhere, it is evident that such laws do not abridge the common law but, rather, simply affirm it. See Article 41, §102 of the Maryland Code; A. & H. Transp. Co. v. Save Way Stations, 214 Md. 325, 331-32 (1957); Sacks and Stokes, supra, at 355; R. Callmann, The Law of Unfair Competition, Monopolies and Trademarks §97.4 (1967). Common law ownership rights in a trademark "can only be acquired by actual adoption and use of the mark for the purpose of identifying the source or origin of the article to which it is attached. Mere state registration of a trademark is not enough to create an exclusive right to use the mark in the absence of true common law ownership." Sacks and Stokes, supra, at 355. See also A. & H. Transp. Co. v. Save Way Stations, 214 Md. at 331-32.

State registration, in turn, merely provides a public record of asserted common law rights in a trade or service mark. Sacks and Stokes, supra, at 355. "State registration, as distinguished from federal registration, does not warrant any presumption of ownership or validity of the mark registered, since states ordinarily lack the facilities for pre-examination or even classification". Callmann, supra, at §97.4.2 Whatever the value of state registration, the Maryland Trademark Law contains a registration mechanism that largely follows the Model State Bill and, as a consequence, mirrors many provisions of the Lanham Act.3

III
"Persons" Eligible for Registration

A. Introduction

Under the Maryland Trademark Law, "any person who adopts and uses a mark in the State may file . . . an application for registration of that mark". Article 41, §92(a) of the Maryland Code. For those purposes, "person" is defined to mean "any individual, firm, partnership, corporation, association, union or other organization". Article 41, §90(b) of the Maryland Code. Virtually the same definition of "person" appears in the Model State Bill, as well as in the statutes of many states. See, e.g., N.Y. Gen. Bus. Law §360(b); Del. Code Ann. tit. 6, §3302(3). Similar definitions appear in the Lanham Act. See 15 U.S.C. §1051(a) and §1127.4 None of these definitions expressly include governmental entities within their purview.

The Court of Appeals recently summarized the rule of construction for such a general definition:

"This Court has consistently held that the word 'person' in a statute does not include the State, its agencies or subdivisions unless an intention to include these entities is made manifest by the Legislature." Unnamed Physician v. Commission on Medical Discipline, 285 Md. 1, 12 (1979).

In the case of the Maryland Trademark law, however, we believe that the General Assembly's intention to include governmental entities within the registration provisions can fairly be inferred.

B. Construction of "Person" in Other Trademark Laws

As discussed above, the registration mechanism of the Maryland Trademark Law mirrors in key respects that of the Lanham Act and the Model State Bill, including the definition of "person". And, under those other statutes, governmental entities have been treated as encompassed by the term "person".

Under the Lanham Act, according to the official manual for federal trademark examiners: "Nations, states, municipalities, and other related types of bodies, operating with governmental authorization, may apply to register marks which they own." Trademark Manual of Examining Procedures §802.01 (citing In re United States Department of the Interior, 142 U.S.P.Q. 506 (TT&A Bd. 1964) and National Aeronautics and Space Administration v. Record Chemical Co., Inc., 185 U.S.P.Q. 563 (TT&A Bd. 1975)).5

Similarly, the Attorney General of New York has concluded that, under that state's version of the Model State Bill, a governmental agency may register a mark. 1958 Opinions of the Attorney General of New York 193 (1958). Other states with trademark registration statutes similar to Maryland's also have permitted registration of marks by governmental agencies. For example, Connecticut permitted the Town of East Hartford to register a symbol of the East Hartford Bicentennial; Indiana has authorized itself to register the phrase "Wander Indiana"; and New York has registered "I Love New York".

Such construction, given to the term "person" in federal practice and in jurisdictions that have adopted the Model State Bill, is especially pertinent here: when a provision of Maryland law is patterned after a provision of the law of other jurisdictions, the construction given that provision in those other jurisdictions is "persuasive as to the meaning of the Maryland act". St. Joseph Hospital v. Quinn, 241 Md. 371, 377 (1965). See also Unsatisfied Claim and Judgment Fund v. Hamilton, 256 Md. 56, 59 (1969); Saunders v. Unemployment Compensation Bd., 188 Md. 677, 688 (1947); 2A Sutherland, Statutory Construction §52.05 (C. Sands 4th ed. 1973).

Hence, we believe that the General Assembly should be understood to have intended the same inclusive definition of "person" in its comparable trademark registration provision.

C. Rationale for Inclusive Construction of "Person"

We also believe that the underlying justification for the general "exclusionary rule" of construction used by the Court of Appeals is inapplicable to this provision of the Maryland Trademark Law.

As one court has explained, this rule of construction is not automatically applied to every statute regardless of its nature:

"In support of their contention that [the word 'person' in a statute governing water rights applied] only [to] private persons, firms or corporations, defendants cite statements by this court that in the absence of express words to the contrary, neither the state nor its subdivisions are included within the general words of a statute. [Citations omitted.] But this rule excludes governmental entities from the operation of general statutory provisions only if their inclusion would result in an infringement upon sovereign governmental powers. 'Where . . . no impairment of sovereign powers would result, the reason underlying this rule of construction ceases to exist and the Legislature may properly be held to have intended that the statute apply to governmental bodies even though it used general statutory language only.' [Citations omitted.]" City of Los Angeles v. City of San Fernando, 537 P.2d 1250, 1306-07 (Cal. 1975) (emphasis deleted).

See also In re Public Parking Auth. of Pittsburgh, 76 A.2d 620 (Pa. 1950).

The Maryland Court of Appeals has similarly described the purpose of the rule in the leading case of Mayor and City Council of Baltimore v. Baltimore Gas and Elec. Co., 232 Md. 123 (1963). According to the Court of Appeals, the general rule of construction that excludes the sovereign "from the purview of a statute in terms applicable to a person or corporation 'finds its basis in no small part in the doctrine of governmental immunity'". 232 Md. at 136 (quoting United States v. Coumantaros, 165 F.Supp. 695, 698 (D.Md. 1958)). By contrast, "'the general exclusionary rule has no application where no impairment of sovereign power will result, where immunity has been waived or where the government is given, rather than deprived of, powers'". 232 Md. at 136. The Coumantaros case, from which the Court of Appeals quoted with evident approval, adds that this exclusionary rule of construction should not be applied when the sovereign entity is acting without detriment to its sovereignty and "is engaging in commercial and business transactions such as other persons, natural or artificial, are accustomed to conduct". United States v. Coumantaros, 165 F.Supp. at 698.

Taken together, Baltimore Gas and Coumantaros suggest at least the following distinction: A governmental entity will be excluded from the general term "person" if the contrary reading would result in impairment of the entity's sovereignty, but not if it would result solely in enhancement of the entity's proprietary activities.6

Here, in applying for and obtaining registration of a trade or service mark, Baltimore City (or any State or local governmental entity) does not impair its sovereign powers, waive immunity, or incur liability. To the contrary, it seeks a proprietary benefit as part of its effort to engage in a commercial or business transaction customary to private entities. In our opinion, the rule of construction ordinarily excluding a governmental agency from references to the word "person" is inapplicable in these circumstances.

D. Conclusion

For these reasons, we believe that Baltimore City and other governmental entities are "persons" within the meaning of the Maryland Trademark Law and, as such, are entitled to register a mark used in Maryland.

IV
Geographical Marks

A second issue is whether registration of the particular marks in question is barred by Article 41, §91(5).

Section 91(5) provides in pertinent part that a submission may not be registered if it consists of a mark that, "when applied to the goods or services of the applicant[,] is primarily geographically descriptive or deceptively misdescriptive of them". This restriction is necessary to prevent someone from monopolizing a geographical term in common use. See R. Callmann, supra, at §72. On the other hand, if a word is understood by the public to convey a distinctive "secondary meaning" beyond mere geographic description, then it may be registered. Id. at §72.5. Thus, §91(5) goes on to state that:

"The Secretary of State may accept as evidence that the mark has become distinctive, as applied to the applicant's goods or services, proof of continuous use thereof as a mark by the applicant in this State or elsewhere for the five years next preceding the date of the filing of the application for registration."

Although Maryland courts apparently have not had occasion to construe this particular statutory provision, they have explored the issue in applying the common law requirements for a technical tradename in suits alleging unfair competition. For example, in Baltimore Bedding Corp. v. Moses, 182 Md. 229 (1943), the Court of Appeals held that there can be no exclusive appropriation of geographical marks. However, the Court recognized that a geographical word or phrase originally incapable of exclusive appropriation "might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product". 182 Md. at 238. If so used, the words were said to acquire a "secondary meaning", rendering the geographical name or mark valid. Id. On the facts before it, the Court applied these principles to reject the contention that 27 years as a manufacturer of bedding in Baltimore under the name of "Baltimore Spring Bed Company" gave the firm name a valid secondary meaning.

Similarly, in Edmondson Village Theatre v. Einbinder, 208 Md. 38 (1955), the Court of Appeals held that one business did not have the exclusive right to use the geographical name "Edmondson". In so doing, however, the Court wrote:

"It is a general rule, subject to exceptions, that a geographical, locational or place name is common property and cannot be appropriated as the subject of an exclusive trademark or trade name. But where a geographical name acquires a secondary meaning indicating not only the place of production but also the producer and the quality of his product, the owner may assert an exclusive right to the name against all persons who are not doing business within the geographical limits, and even against persons within the geographical limits if the name has been used fraudulently to mislead purchasers. It has thus been held that the use of the name of a place may ordinarily be protected where it indicates the origin and ownership of medicinal waters; but where a name has become a generic one for mineral waters of a certain type, coming from a more or less extensive district, it cannot be the subject of exclusive use. La Republique Francaise v. Saratoga Vichy Spring Co., 191 U.S. 427, 24 S.Ct. 145, 48 L.Ed. 247; Saxlehner v. Wagner, 216 U.S. 375, 30 S.Ct. 198, 54 L.Ed. 525." 208 Md. at 46.

Rudolph Callmann states that "[a] geographical term is generally understood as one which refers to, or describes the place or origin of a product or the situs of a business." Callmann, supra, at §72. He also notes that:

"Though a word may be geographical, it may nevertheless have another meaning . . . . The decisive factor in such a case is the public reaction to and understanding of the word." Id. at §72.5.

Callmann adds that "[t]he modification of a geographical word may be sufficiently distinctive to entitle the resulting phrase to protection". Id. at §72.6(c).

Similar principles govern the treatment of geographical marks by the federal authorities. According to the Trademark Trial and Appeal Board:

"[T]he criteria for determining the registrability of a geographical designation . . . are (a) whether the term conveys to customers primarily or immediately a geographical connotation and then (b) whether the goods do in fact come from the place so named . . . . If the notation in question does not convey an immediate or readily recognizable geographical significance to the average consumer, the mark is manifestly arbitrary, and the second question need not be pursued. However, if the response is in the affirmative, we proceed to the next question. If the goods actually come from the place named, the mark in question is primarily geographically descriptive of the goods and registrable . . . upon a showing . . . that the mark has become distinctive of that party's goods in commerce. [G]eographic terms should be free to be used by all business organizations within the geographical area to describe geographically the origin of their goods unless and until it can be shown by competent proof that the mark has acquired a secondary meaning." In re Charles S. Loeb Pipes, Inc., 190 U.S.P.Q. 238, 244 (TT&A Bd. 1975).

The Trademark Manual of Examining Procedures states as follows:

"When a name of a geographic area or other matter having geographical meaning is a component of a mark, the other wording or design in the mark might dilute the geographical significance so that the composite mark might not be subject to refusal on a geographical basis." §1208.07 (emphasis in original).

It is indisputable that the slogan "Baltimore's Best/Baltimore is Best" conveys an immediate geographical connotation. A slogan designed to promote the City and encourage tourism could hardly be effective if it did not.7 However, the slogan in question does not consist solely of a geographical phrase but is a "matter having geographical meaning [as] a component of a mark".

Moreover, it does not appear that the City's submission was intended primarily to describe the place of origin of the goods to which "Baltimore's Best/Baltimore is Best" is affixed or to describe the location of the services to be provided.8 Rather, the mark is intended to instill civic pride and promote the virtues of the City.

We think it can be forcefully argued that the "Baltimore's Best/Baltimore is Best" phrase has indeed acquired a distinctive meaning and is associated in the mind of the public only with the City's laudable promotion efforts and awards program. The City is not attempting to appropriate for its own exclusive use the commonplace terms "Baltimore" and "Best". Rather it simply seeks to register the distinctive slogan that has resulted from the City's past use of the conjoined phrases "Baltimore's Best/Baltimore is Best".9

Moreover, §91(5) authorizes the Secretary of State to accept, as evidence of the distinctive nature of the mark, five years continued use in Maryland. The City's application states that the mark has been used since 1976 and, as required by law, represents that "no other person has the right to use such mark in this State, either in the identical form thereof or in any such near resemblance thereto as might be calculated to deceive or to be mistaken therefor". See Article 41, §92(a)(4). It is our opinion that you may rely on these assertions to conclude that the mark has become distinctive and that, therefore, registration is not foreclosed on the grounds that the submission is geographical.

Finally, as to the sailboat logo sought to be registered on behalf of the City Convention Bureau, we note that this logo is not primarily a geographical mark. The application does not seek to register the word "Baltimore" in isolation, only the distinctive logo that embellishes it.10

V
Conclusion

In summary, it is our opinion that: (1) governmental entities such as Baltimore City are "persons" entitled to apply for registration of trade and service marks under the Maryland Trademark Law; and (2) the specific marks submitted by Baltimore City are not disqualified from registration on the basis of their evident geographically descriptive nature, because the marks convey a distinctive secondary meaning.

Stephen H. Sachs, Attorney General
Avery Aisenstark, Chief Counsel,
Opinions and Advice
Robert A. Zarnoch, Assistant Attorney General

1 One item on the City's application form listed the phrases "Baltimore's Best" and "Baltimore is Best" as two separate slogans. However, other entries on the form, and, most significantly, the specimens of the mark that must by law accompany the application, make clear that the phrases are used together as but a single slogan. In our view, the mark should be registered as shown in the specimen. As discussed in note 9 below, an application to register the phrase "Baltimore's Best" alone would raise more difficult issues.

2 Under the Lanham Act, a federal registrant enjoys a favored status. Registration on the Principal Register in the Trademark Office is prima facie evidence of the owner's right to use of the trademark in interstate commerce, and this right may become incontestable. See 15 U.S.C. §1115.

Commentators differ as to the desirability of state registration. Compare Sacks and Stokes, supra, at 354 ("Traditional state trademark statutes are important additions to the protection afforded by the common law.") with Callmann, supra, at §98.1 n. 34 ("The advantage of state registration is so negligible that it might be better if there was none.").

3 The only substantive amendment to the 1954 Maryland law expanded the statute to encompass "service marks" as well as trademarks. Chapter 751, Laws of Maryland 1967. This amendment, however, did not affect the particular provisions, derived from the Model State Bill and the Lanham Act, that we consider in this Opinion.

4 Under 15 U.S.C. §1051(a), an application for a federal trademark must be "verified by the applicant, or by a member of the firm or an officer of the corporation or association applying". 15 U.S.C. §1127, in turn, provides that:

"The term 'person' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term 'juristic person' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law."

A provision of the Lanham Act dealing with the registration of collective marks and certification marks authorizes "persons, and nations, States, municipalities and the like" to seek registrations. 15 U.S.C. §1054. Nevertheless, the specific inclusion of governmental entities in this one provision has not been interpreted to imply the exclusion of such entities from the general provision on trademark registration found elsewhere in the statute.

5 The State of New York has itself registered a mark with its Secretary of State: "I Love New York." See Service Mark No. 4180, dated September 16, 1977.

6 Although Baltimore Gas has been cited by the Court of Appeals in its subsequent reiterations of the rule of statutory construction in question, the distinction we suggest has not been fully developed or articulated. See Unnamed Physician v. Commission on Medical Discipline, 285 Md. 1, 12 (1979); State Comm'n on Human Relations v. Baltimore, 208 Md. 35, 39 (1977); Harden v. Mass Transit Admin., 277 Md. 399, 408 (1976). In Harden, the Court of Appeals stated that: "Although many of the cases supporting this principle [of statutory construction] involve some portion of the sovereign power, the cases are by no means confined to that." 277 Md. at 412. It then cited with approval an 1877 United States Supreme Court opinion in which the United States was held not to be a "person" entitled to take lands under a will. Id. Thus, we do not suggest that the rule excluding governmental entities from general terms like "person" applies only when sovereignty would otherwise be impaired. We do think, however, that it would not be applied by the Court of Appeals at least where, as here, there is no impairment of sovereignty and the provision in question is designed to protect a proprietary interest.

7 State registered marks such as "I Love New York" and "Wander Indiana" have a similar geographical connotation.

8 The application submitted by the City does not disclose if the goods in question are produced locally or elsewhere.

9 Greater difficulty would be presented if the City were to seek separate registration of each of the two phrases that, together, constitute the slogan "Baltimore's Best/Baltimore is Best". The phrase "Baltimore's Best", in particular, consists of nothing but descriptive words, part geographical, part qualitative, that have probably long been used by purveyors of various goods and services in the City. Indeed, the additional word associated with "Baltimore", i.e., "Best", has been found to be incapable of exclusive use. See Nebraska Consolidated Mills v. Shawnee Milling Co., 99 F.Supp. 70 (W.D. Okla. 1951), aff'd, 198 F.2d 36 (10th Cir. 1952). Perhaps the other phrase in the slogan, "Baltimore is Best", is independently registrable, because it is a distinctive claim for the City itself, not readily useable as a description for goods or services. At any rate, we need not resolve these questions in view of the fact that the slogan for which registration is sought is the combination of the two phrases, not either in isolation.

10 As discussed above, "the other wording or design" in a mark with a geographical component may permit registration. Trademark Manual of Examining Procedures §1208.07.