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. 
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 trademark of the phrase ‘The Last Best Place.’" The district court deemed

§ 206 "invalid," and thus a legal nullity, on the grounds that it contradicted 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 committed "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 appropriations 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. 

2 LAST BEST BEEF v. DUDAS
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 trademarks: 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. 

LAST BEST BEEF v. DUDAS 3
trademark applications, but it had not yet registered those trademarks.

See 15 U.S.C. § 1051(d)(1). Second, oppositions by the State of Montana 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) cancelled the four Notices of Allowance, (2) suspended all action pertaining

to the applications covered by the Notices of Allowance, (3) suspended proceedings regarding the two applications being opposed by

the State of Montana before the TTAB, and (4) cancelled the two registrations it had issued and returned those applications to pending status. 

In February 2006, Last Best Beef filed a complaint in the United

States District Court for the District of Columbia, which later transferred the case to the Eastern District of Virginia. In addition to several 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 registration on the principal register on account of its nature . . . ."

Although § 1052 sets forth a number of exceptions to this rule,3 the

2The 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 per4 LAST BEST BEEF v. DUDAS
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 explicitly 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 "insufficient to demonstrate manifest congressional intent to suspend numerous, 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 Trademark Procedures into a statute full of holes and exceptions." Accordsons, living or dead, institutions, beliefs, or national symbols, or bring

them into contempt or disrepute. . . ."); § 1052(b) (prohibiting the registration 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 misdescriptive" of an applicant’s goods); § 1052(e)(4) (prohibiting the registration

of a mark that is "primarily merely a surname"). 

LAST BEST BEEF v. DUDAS 5
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 suspended 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 "appropriations 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 substantive 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

4The terms "repeal," "suspension," and "amendment" appear throughout both the district court opinion and the briefs. We are unable to discern 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. 

6 LAST BEST BEEF v. DUDAS
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 holding, 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 subsequent 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 interpretation. 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). 

LAST BEST BEEF v. DUDAS 7
Therefore, whether Congress has, through § 206, impliedly suspended the Lanham Act in one particular instance presents an ordinary 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 Appellees at 12. Indeed, as both Last Best Beef and the district court recognize, the USPTO simply cannot comply simultaneously with § 1052

of the Lanham Act, which prohibits the refusal of trademark registration "on account of [the trademark’s] nature" and § 206, which prohibits the use of funds to "register, issue, transfer, or enforce any

trademark of the phrase ‘The Last Best Place.’" Id.; see also Memorandum 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 irreconcilable conflict. Thus, "[w]here Congress chooses to amend substantive 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 quotations omitted). 

The conclusion that Congress intended to enact a discrete and narrow 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) (giving the Department of the Interior the exclusive right to use the character 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

8 LAST BEST BEEF v. DUDAS
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 Committee").

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. Section 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, administration, 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 wisdom 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 Allowance, 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

LAST BEST BEEF v. DUDAS 9
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 generally should not stand in the way of the agencies’ remediation of

their own mistakes. See Citizens Against the Pellissippi Pkwy Extension 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 proceedings 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

10 LAST BEST BEEF v. DUDAS
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 artificial 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

LAST BEST BEEF v. DUDAS 11