PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
THE LAST BEST BEEF, LLC,
Plaintiff-Appellee,
v.
JONATHAN W. DUDAS, in his official
capacity as Under Secretary of
Commerce for Intellectual Property No. 06-2219
and Director of the United States
Patent and Trademark Office;
LYNNE G. BERESFORD, in her official
capacity as the Commissioner for
Trademarks for the United States,
Defendants-Appellants.
Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
Gerald Bruce Lee, District Judge.
(1:06-cv-00399)
Argued: September 28, 2007
Decided: October 24, 2007
Before WILKINSON and KING, Circuit Judges,
and Frederick P. STAMP, Jr., Senior United States District Judge
for the Northern District of West Virginia, sitting by designation.
Reversed and remanded by published opinion. Judge Wilkinson wrote
the opinion, in which Judge King and Senior Judge Stamp joined.
2 LAST BEST BEEF v. DUDAS
COUNSEL
ARGUED: Joshua Paul Waldman, Civil Division, Appellate Staff,
UNITED STATES DEPARTMENT OF JUSTICE, Washington,
D.C., for Appellants. David M. Monachino, SEYFARTH & SHAW,
L.L.P., New York, New York, for Appellee. ON BRIEF: Peter D.
Keisler, Assistant Attorney General, Washington, D.C., Chuck
Rosenberg, United States Attorney, Alexandria, Virginia, Scott R.
McIntosh, Civil Division, Appellate Staff, UNITED STATES
DEPARTMENT OF JUSTICE, Washington, D.C., for Appellants.
Eddy Salcedo, SEYFARTH & SHAW, L.L.P., New York, New York;
Alexander X. Jackins, SEYFARTH & SHAW, L.L.P., Washington,
D.C., for Appellee.
OPINION
WILKINSON, Circuit Judge:
We are asked in this case to decide the relationship between the
Lanham Act, 15 U.S.C. §§ 1051 et seq. (2000), and Section 206 of the
subsequently enacted Science, State, Justice, Commerce, and Related
Agencies Appropriations Act of 2006 ("§ 206"), which prohibits the
use of federal funds to "register, issue, transfer, or enforce any trade-
mark of the phrase ‘The Last Best Place.’" The district court deemed
§ 206 "invalid," and thus a legal nullity, on the grounds that it contra-
dicted but did not constitute an implied repeal or suspension of the
Lanham Act. In essence, the district court held that implied repeals
through appropriations riders, though constitutional, are so disfavored
as to be disallowed. As a result, the district court further declared that
the United States Patent and Trademark Office ("USPTO") had com-
mitted "clear error" by complying with § 206.
However, in this case, it is the district court that erred. Congress
has the power to amend substantive legislation through appropriations
riders if it does so very clearly. It did so here in a duly enacted appro-
priations act with clarity and specificity. We cannot strike down such
an act unless unconstitutional. We certainly cannot declare § 206
invalid for contravening a previously enacted piece of legislation.
LAST BEST BEEF v. DUDAS 3
I.
A Montana writer, William Kittredge, coined the phrase "The Last
Best Place" in 1988 as a title to his anthology of Montana poetry and
prose. Like a fishing line cast a thousand miles out, the phrase became
part of the Montana culture. Local businesses and the Montana state
government used it. But at first, no one trademarked it.
Between 2001 and 2004, Last Best Beef, a Nevada business, filed
eight applications with the USPTO for federal trademark registration
of the phrase "The Last Best Place" in connection with a variety of
different products and services. These included cookware, clothing,
food products, jewelry, home items, and travel, hotel, and restaurant
services.1 All this activity generated considerable opposition within
Montana.
On November 22, 2005, the President signed into law the Science,
State, Justice, Commerce, and Related Agencies Appropriations Act
of 2006. See Pub. L. No. 109-108, 119 Stat. 2290 ("Appropriations
Act"). Section 206 of the Appropriations Act, which applies to the
USPTO, provides: "Notwithstanding any other provision of this Act,
no funds appropriated under this Act shall be used to register, issue,
transfer, or enforce any trademark of the phrase ‘The Last Best
Place.’" Section 206 has been extended through a series of continuing
resolutions, the most recent of which extends the restriction through
November 16, 2007. See H.J. Res. 52, 110th Cong. §§ 101(3), 103-04,
106 (2007).
When the President signed the Appropriations Act into law, Last
Best Beef’s eight trademark applications were in various stages of
consideration with the USPTO. First, the USPTO had issued Notices
of Allowances — preliminary approvals of trademark registration,
pending proof of use of the trademark in commerce — for four of the
1
In addition, in 2003, Last Best Beef was assigned two federal trade-
marks: one on the phrase "The Last Best Place Catalog," which was
issued to registration in July of 1994, and the second on the phrase "The
Last Best Place Catalog Company," which was issued to registration in
February of 1995. Last Best Beef failed to maintain the second trademark
by renewing it within ten years of its registration.
4 LAST BEST BEEF v. DUDAS
trademark applications, but it had not yet registered those trademarks.
See 15 U.S.C. § 1051(d)(1). Second, oppositions by the State of Mon-
tana to two of the applications — on the grounds that the phrase "The
Last Best Place" is primarily a geographically descriptive term that
identifies the State of Montana and is thus not entitled to registration
under the Lanham Act, see 15 U.S.C. § 1052(e)(2) — were pending
before the Trademark Trial and Applications Board ("TTAB").
Finally, on the same day the President signed § 206 into law, but
before the USPTO became aware of the legislation, the USPTO had
issued certificates of registration for the two remaining trademarks.
Upon learning about § 206, the USPTO in January 2006 (1) cancel-
led the four Notices of Allowance, (2) suspended all action pertaining
to the applications covered by the Notices of Allowance, (3) sus-
pended proceedings regarding the two applications being opposed by
the State of Montana before the TTAB, and (4) cancelled the two reg-
istrations it had issued and returned those applications to pending sta-
tus.
In February 2006, Last Best Beef filed a complaint in the United
States District Court for the District of Columbia, which later trans-
ferred the case to the Eastern District of Virginia. In addition to sev-
eral constitutional claims,2 Last Best Beef contended that § 206
improperly circumvented the Lanham Act, and, therefore, the actions
the USPTO took under § 206 in January of 2006 were unlawful. As
such, Last Best Beef requested an injunction requiring the USPTO to
reinstate the cancelled registrations and Notices of Allowance.
The district court granted summary judgment for Last Best Beef,
declaring that § 206 was "invalid legislation" insofar as it "improperly
circumvent[ed]" the Lanham Act. Specifically, § 1052 of the Lanham
Act ("§ 1052") states that "[n]o trademark . . . shall be refused regis-
tration on the principal register on account of its nature . . . ."
Although § 1052 sets forth a number of exceptions to this rule,3 the
2
The district court did not address these claims, and neither do we.
3
See 15 U.S.C. § 1052(a) (prohibiting the registration of trademarks
that consist of or comprise "immoral, deceptive, or scandalous matter; or
matter which may disparage or falsely suggest a connection with per-
LAST BEST BEEF v. DUDAS 5
district court found that none applied to the phrase "The Last Best
Place." Thus, according to the district court, § 206 "circumvented" the
Lanham Act "by insisting that any trademark for the phrase ‘Last Best
Place’ be refused registration."
Specifically, the district court concluded that § 206 did not explic-
itly or implicitly suspend provisions of the Lanham Act with respect
to the phrase "Last Best Place." While the district court recognized
that an "irreconcilable conflict between two statutes is sufficient to
express congressional intent to impliedly repeal an earlier statute," the
district court deemed the conflict between § 206 and § 1052 "insuffi-
cient to demonstrate manifest congressional intent to suspend numer-
ous, interdependent provisions of the Lanham Act with respect to one
phrase . . . ." The district court found § 206 particularly troublesome
because appropriations measures are not the appropriate vehicles "for
the amendment of general laws." In so concluding, the district court
emphasized that it was "not inclined to open the door to a litany of
whimsical exceptions to the Lanham Act like those that riddle the Tax
Code," as doing so would destabilize businesses and "turn the Trade-
mark Procedures into a statute full of holes and exceptions." Accord-
sons, living or dead, institutions, beliefs, or national symbols, or bring
them into contempt or disrepute. . . ."); § 1052(b) (prohibiting the regis-
tration of marks that consist of or comprise "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"); § 1052(c) (prohibiting
the registration of marks that consist of or comprise "a name, portrait, or
signature identifying a particular living individual except by his written
consent," or identifying "a deceased President of the United States during
the life of his widow, if any, except by the written consent of the
widow"); § 1052(d) (prohibiting the registration of marks which "so
resemble[ ] a mark" already registered or which have been "previously
used in the United States by another and not abandoned . . . when used
. . . to cause confusion, or to cause mistake, or to deceive. . . .")
§ 1052(e)(1) (prohibiting the registration of marks that are "merely
descriptive or deceptively misdescriptive" of an applicant’s goods);
§ 1052(e)(2)-(3) (prohibiting the registration of marks that are "primarily
geographically descriptive" or "geographically deceptively misdescrip-
tive" of an applicant’s goods); § 1052(e)(4) (prohibiting the registration
of a mark that is "primarily merely a surname").
6 LAST BEST BEEF v. DUDAS
ing to the district court, since § 206 did not conflict with § 1052
enough to repeal it, but conflicted with it too much to be enforced,
§ 206 must be "invalid."
Finally, the district court stated that nothing in § 206 authorized the
USPTO to cancel pending trademark applications or to suspend either
the Notices of Allowance or the TTAB proceedings, and thus ordered
the USPTO to reinstate the previously issued trademarks, the sus-
pended Notices of Allowance, and the suspended TTAB proceedings.
Having resolved the case on statutory grounds, the district court found
it unnecessary to reach Last Best Beef’s constitutional arguments.
The USPTO now appeals.
II.
Last Best Beef contends, in agreement with the district court, that
§ 206 cannot constitute an implied repeal or suspension4 of § 1052
because § 206 fails to state that it is amending either the Lanham Act
or trademark law, and indeed makes no mention of the Lanham Act
at all. Thus, Last Best Beef contends, § 206 fails the requirement set
forth in Tennessee Valley Authority v. Hill, 437 U.S. 153, 189 (1978)
("TVA"), namely that congressional intent to effectuate an implied
repeal must be unambiguous. Last Best Beef further argues that "ap-
propriations bills are not appropriate vehicles for the passage or
amendment of substantive law." See Andrus v. Sierra Club, 442 U.S.
347, 361 (1979) ("The distinction [between appropriations and sub-
stantive legislation] is maintained . . . to enable the Appropriations
Committees to concentrate on financial issues and to prevent them
from trespassing on substantive legislation.") (internal quotations
omitted).
In support of these arguments, Last Best Beef relies heavily upon
the Supreme Court’s decision in TVA, in which the Court held that the
4
The terms "repeal," "suspension," and "amendment" appear through-
out both the district court opinion and the briefs. We are unable to dis-
cern any operative difference among these terms in this case where the
result of later legislative action is to deprive an earlier enactment of force
and effect.
LAST BEST BEEF v. DUDAS 7
Endangered Species Act ("ESA") prohibited the Tennessee Valley
Authority ("TVA") from putting into operation the Tellico Dam,
despite the fact that Congress had, after the enactment of the ESA,
continued to make appropriations to the TVA, some of which were
earmarked for the Tellico Dam project. 437 U.S. at 153. In so hold-
ing, the Court made clear "that repeals by implication are not
favored," and therefore, "the intention of the legislature to repeal must
be clear and manifest." Id. at 189 (quoting Posadas v. Nat’l City
Bank, 296 U.S. 497, 503 (1936)). Moreover, the doctrine disfavoring
repeals by implication "applies with full vigor when . . . the subse-
quent legislation is an appropriations measure." TVA, 437 U.S. at 190
(emphasis in original) (quoting Committee for Nuclear Responsibility
v. Seaborg, 463 F.2d 783, 785 (D.C. Cir. 1971)).
While the canon of statutory interpretation disfavoring implied
repeals in appropriations bills is strong, it is still just a canon of inter-
pretation. It is not an absolute rule. The Court has made clear that if
and when Congress wishes to suspend or repeal a statute in force,
"[t]here can be no doubt that . . . it could accomplish its purpose by
an amendment to an appropriation bill, or otherwise." United States
v. Dickerson, 310 U.S. 554, 555 (1940); see also United States v.
Will, 449 U.S. 200, 222 (1980). Indeed, "Congress . . . may amend
substantive law in an appropriations statute, as long as it does so
clearly." Robertson v. Seattle Audubon Soc’y, 503 U.S. 429, 440
(1992). An irreconcilable conflict between the old and new legislation
can demonstrate such clear intent to repeal. "Where provisions in the
two acts are in irreconcilable conflict, the later act to the extent of the
conflict constitutes an implied repeal of the earlier one." Posadas, 296
U.S. at 503; see also TVA, 437 U.S. at 190; Georgia v. Pennsylvania
R.R. Co., 324 U.S. 439, 457 (1945).
In fact, the Court in TVA did not reject the principle that implied
repeals could be effectuated through appropriations acts; rather, the
Court simply found that the particular appropriations bill at issue —
which neither explicitly identified the projects for which the sums had
been appropriated nor provided a statutory command that the Tellico
Dam should be completed — was insufficient to constitute an implied
repeal of the ESA. TVA, 437 U.S. at 189-91; see also Nat’l Ass’n of
Home Builders v. Defenders of Wildlife, 127 S.Ct. 2518, 2536 (2007)
(describing TVA).
8 LAST BEST BEEF v. DUDAS
Therefore, whether Congress has, through § 206, impliedly sus-
pended the Lanham Act in one particular instance presents an ordi-
nary question of statutory interpretation that requires us to determine
whether or not Congress clearly expressed its intention to repeal
through an irreconcilable conflict between § 206 and § 1052. See
Pennsylvania R.R. Co., 324 U.S. at 457 (where a "clear repugnancy
between the old law and the new" exists, the former must give way).
Congress did create such a conflict. As Last Best Beef itself
pointed out, "Section 206 prevents, in absolute contradiction with the
Lanham Act, one phrase from being trademarked." Brief of Appel-
lees at 12. Indeed, as both Last Best Beef and the district court recog-
nize, the USPTO simply cannot comply simultaneously with § 1052
of the Lanham Act, which prohibits the refusal of trademark registra-
tion "on account of [the trademark’s] nature" and § 206, which pro-
hibits the use of funds to "register, issue, transfer, or enforce any
trademark of the phrase ‘The Last Best Place.’" Id.; see also Memo-
randum Order at 9-10 ("Section 206 conflicts with this provision [of
the Lanham Act] by insisting that any trademark for the phrase ‘Last
Best Place’ be refused registration."). This is a paradigm of an irrec-
oncilable conflict. Thus, "[w]here Congress chooses to amend sub-
stantive law in an appropriations rider, we are bound to follow
Congress’s last word on the matter even in an appropriations law."
Strawser v. Atkins, 290 F.3d 720, 734 (4th Cir. 2002) (internal quota-
tions omitted).
The conclusion that Congress intended to enact a discrete and nar-
row exception to the Lanham Act is unavoidable. In fashioning § 206,
Congress simply set forth an exception to the Lanham Act’s general
rule that trademark registration may not be refused on the basis of the
nature of the trademark. This is something Congress can do. In fact,
Congress has often removed specific trademarks from the general
trademark application process. See, e.g., 18 U.S.C. § 711 (2000) (giv-
ing the Department of the Interior the exclusive right to use the char-
acter and name of "Smokey Bear"); 36 U.S.C. § 80305 (2000) (giving
"The Girl Scouts of America the exclusive right to use all emblems
and badges, descriptive or designating marks, and words or phrases
the [Girl Scouts of America] adopts, including the badge of the Girl
Scouts . . . ."); § 130506 (giving Little League Baseball the exclusive
right to use the names "Little League" and "Little Leaguer" and "the
LAST BEST BEEF v. DUDAS 9
official Little League emblem or any colorable simulation of that
emblem"); § 220506(a) (giving the United States Olympic Committee
the exclusive right to use the name "United States Olympic Commit-
tee").
Moreover, while we are willing to assume with the district court
that this is an implied suspension or repeal, even that assumption is
in question. Since the Lanham Act is the only statutory authority
under which the USPTO could take the actions forbidden in § 206, it
might easily be held that § 206 refers expressly to the Lanham Act for
the simple reason that it could not be referring to anything else. Sec-
tion 206 admits of no doubt: it forbids the use of funds to register or
issue trademarks on the phrase "The Last Best Place." Cf. McHugh v.
Rubin, 220 F.3d 53, 58 (2d Cir. 2000) (appropriations statutes that
"speak in terms of the ATF’s ability to spend appropriated funds . . .
"obvious[ly]" prohibits the ATF from acting altogether); NTEU v.
Devine, 733 F.2d 114, 114, 120 (D.C. Cir. 1984) (an appropriations
measure prohibiting the use of funds to "implement, promulgate,
administer or enforce" proposed Office of Personnel Management
regulations must be construed to prevent the "implementation, admin-
istration, or enforcement" of the regulations themselves).
In the face of such clarity, to declare § 206 "invalid" is to adopt a
per se rule that Congress cannot amend or suspend prior legislation
through appropriations riders. We decline to take such a step. While
the district court expressed the view that it was unwilling to see the
Lanham Act punctuated by the types of exceptions that characterize
such complex bodies of law as the Internal Revenue Code, the wis-
dom of tradeoffs between simplicity and complexity is for Congress
to decide, not the federal courts. What may seem inadvisable on the
part of Congress is not unconstitutional. The judgment must be
reversed.
III.
Last Best Beef also contends that the USPTO lacked authority to
cancel or suspend the trademark registrations, the Notices of Allow-
ance, or the TTAB proceedings, insofar as § 206 did not authorize
"the cancellation or suspension of any registration or Notice of
Allowance in circumvention of the Lanham Act." Brief of Appellees
10 LAST BEST BEEF v. DUDAS
at 18. The district court agreed, noting that "Section 206 does not give
the USPTO the authority to cancel pending trademark applications."
While Last Best Beef and the district court both correctly note that
§ 206 does not explicitly spell out the USPTO’s authority to cancel
or suspend the trademark registrations, applications, and Notices of
Allowance, the USPTO’s authority to take such actions need not
derive from § 206. The authority comes from the USPTO’s inherent
discretion to correct its own errors and to manage its own docket. See,
e.g., Florida Mun. Power Agency v. FERC, 315 F.3d 362, 366 (D.C.
Cir. 2003); Macktal v. Chao, 286 F.3d 822, 825-26 (5th Cir. 2002)
(agencies have inherent authority to "reconsider" prior decisions).
First, federal agencies, including the USPTO, have broad authority
to correct their prior errors. See, e.g., Alto Dairy v. Veneman, 336
F.3d 560, 568 (7th Cir. 2003); Macktal, 286 F.3d at 825-26; Trujillo
v. Gen. Elec. Co., 621 F.2d 1084, 1086 (10th Cir. 1980). Indeed,
when federal agencies take erroneous or unlawful action, courts gen-
erally should not stand in the way of the agencies’ remediation of
their own mistakes. See Citizens Against the Pellissippi Pkwy Exten-
sion v. Mineta, 375 F.3d 412, 416 (6th Cir. 2002). In fact, it would
be "an abuse of discretion to prevent an agency from acting to cure
. . . legal defects." Id. The USPTO erred in registering two of Last
Best Beef’s trademarks for the phrase "The Last Best Place" after
§ 206 went into effect, and the USPTO acted within its inherent
authority to correct its unlawful action by cancelling the issuance of
those two registrations.
Second, because § 206 prohibits the USPTO from using funds to
register any trademark of the phrase "The Last Best Place," any pro-
ceedings on Last Best Beef’s six remaining trademark applications
would involve a waste of limited administrative resources. It hardly
makes sense for the USPTO to conduct administrative proceedings on
Last Best Beef’s applications if registration, at the culmination of
those proceedings, would run afoul of the statute. This is so even if
the proceedings themselves did not violate § 206, a question which
we need not and do not reach.
IV.
On a general level, Last Best Beef certainly has a point. Where
possible, courts should attempt to harmonize statutory provisions and
LAST BEST BEEF v. DUDAS 11
not go searching for implied repeals. Where, as here, reconciliation
is not possible, courts have no choice but to give effect to the later
enactment. To adopt appellee’s position would be to construct artifi-
cial obstacles to the efforts of current democratic majorities to enact
their views into law.
The judgment of the district court is reversed and the case is
remanded for further proceedings consistent with this opinion.
REVERSED AND REMANDED