Renna v. County of Union, N.J., 2014 WL 2435775, No.
2:11–3328 (D.N.J. May 29, 2014)
This is a well-written opinion whose legal conclusions are
in part obvious but nice to have down in print and in part quite striking: I
think for the first time, a court clearly rules that a mark specifically excluded
from federal registration on policy grounds may not take advantage of §43(a) either. If I were the attorney for Washington’s slur-named
football team, I would be paying attention.
Renna, an outspoken critic of the County Board, produced a
public access television show, the “Union County Citizen’s Forum.” The show
displayed a graphic illustration depicting the Seal of the County of Union with
a spotlight shining on it, symbolizing “the self-proclaimed mission of the show
to shine a critical light on the workings of the Union County Board of Chosen
Freeholders…. It would appear in the background as Renna read Board resolutions
or interviewed guests on the air.”
Screenshot of spotlight logo |
A tidbit from the opinion:
This Seal, by the way, may be the
only official County seal to depict a murder. The central illustration is an
artist’s re-creation of the fatal shooting of Hannah Caldwell during the
Revolutionary War. Hannah resided with her husband, “rebel pastor” James
Caldwell, in the Connecticut Farms area of what today is Union Township. Her
death in 1780, allegedly at the hands of a British soldier, was used to further
galvanize public sentiment against England and its royalist sympathizers.
The County Attorney sent a C&D to the television
station, warning it to stop displaying the seal and claiming trademark
infringement. “Whether the County has
tried to bully a constituent is for the public to decide.” What it didn’t do
was assert any legitimate rights. Declining to reach the First Amendment
issues, the court found that Union County had no trademark rights in its seal,
and Renna’s display in connection with her TV show did not infringe. (If I were the County, I’d get out my
checkbook for fees. The Rutherford
Institute represented Renna.)
The County’s C&D to the Township of Cranford, which
operated the public access channel, said:
Re: Unauthorized usage of the seal
of the County of Union Union County Citizens Forum
To Whom It May Concern:
It has come to the attention of the
County of Union that your entity is using the Seal of the County of Union
without proper authorization. The County of Union demands that your entity
cease and desist use of the Seal of the County of Union in any way including,
but not limited to, displaying it in the background of all television shows with
exception of the prerecorded unedited meetings of the Board of Chosen
Freeholders. Please be advised that the County Seal is also a pending
trademark, therefore you are committing trademark infringement.
Renna discussed the letter with the TV station manager, who
asked her not to use the Seal graphic. Meanwhile,
the USPTO refused the County’s pending trademark registration application, “because
the applied-for mark consists of an insignia of a U.S. municipality.” 15 U.S.C.
§ 1052(b).
When Renna resumed taping (after an unrelated delay), she
replaced the old logo with a new one, a spotlight shining on a photograph of
the Union County Manager.
Revised logo |
This resulted
in another request from the Cranford Township laywer to stop using that logo.
Then the management requested that Renna sign an indemnification agreement,
which made her nervous and caused her to seek legal counsel.
Her counsel then sent a letter to the Union County Counsel
who’d sent the C&D, pointing out that the County was wrong in a number of
ways, with the consequence of chilling Renna’s First Amendment rights. Counsel requested that the County withdraw
its demands. Instead, the County doubled
down, claiming, “For your information, this Seal is in fact now trademarked.” The
County maintained that the seal was “trademarked under Federal law”; that by
state statute, the County was required to maintain a seal; that use by others
was unauthorized; that State law “prohibits a third party, such as your client,
from registering a mark that uses such an insignia”; and that there was “no
impairment of your client’s first amendment right.” The County “simply is
protecting its official seal, protected by trademark, from direct and
unauthorized use.”
Meanwhile, the County failed to respond to the office action
denying registration, and the registration was abandoned. The County tried to revive its application,
but of course revival would’ve been futile, and the application was again
abandoned.
The court ruled that, given Section 2, 15 U.S.C. § 1052(b), the
Seal was not a “valid and legally protectable mark.” Section 2(b) provides an absolute bar to
registration of matter 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.”
The County argued that this barred registration only by
nongovernmental parties, not by the government body itself. “The USPTO, however, correctly and
authoritatively interpreted Section 1052(b) as an ‘absolute bar,’ one that ‘does
not list any exceptions that would allow for countries, states or
municipalities to register their own flags or insignia.’” The Federal Circuit has agreed with the PTO. In Re City of Houston, 731 F.3d 1326 (Fed. Cir.
2013). While G-d and the Supreme
Court know that the fact that the Federal Circuit came to a conclusion doesn’t mean it’s right, the reasoning itself is sound. The
Lanham Act must be read according to its terms, and not as a mandate to protect
the public from “pirates and cheats” of all stripes. “And it would be
particularly inappropriate to read a silent exception into section 2(b),
because the surrounding provisions demonstrate that Congress knew how to
express such an exception when it wanted to.”
In a footnote, the court noted that it was bound by the
statute’s words. But it also defended
the lack of any special exemption for government entities as consistent with
the Lanham Act’s purpose. “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 state insignia are not appropriate subjects of trademark law
at all. Trademark law concerns itself with goods and services in commerce.” McCarthy explains the bar as based on the
theory that government insignia shouldn’t be registered as symbols of origin
for goods and services because such insignia “ought to be kept solely to
signify the government and not to be sullied or debased by use as symbols of
business and trade.” The court concluded that it could “easily imagine the
absurdities that would arise from the trademark registration of flags and
insignia, which are intended to be used by the citizenry.”
In its communications with Renna’s counsel, the County didn’t
acknowledge the USPTO’s authoritative rejection, but instead claimed that the
seal was “now trademarked under federal law,” which—given the earlier reference
to a pending mark, which had to mean registration—“carried the misleading
implication that some intervening event had solidified the trademark status of
the Seal” when the opposite was true. To that misleading implication, the county’s lawyer
added another, claiming that New Jersey law barred third parties from
registering insignia. But the state
statute didn’t say that—it said what the Lanham Act says, imposing a categorical
bar. The letter then added a “non
sequitur”: “Indeed, N.J.S.A. 52:2–4 makes unauthorized use of the State seal a
crime.” While this is true, the state
seal wasn’t at issue. “It is hard to
discern any purpose, other than general intimidation, for the citation of this
criminal statute in an official communication to a citizen, even one
represented by counsel.” The stated
basis for the C&D was illusory.
Okay, so what about § 43(a)?
The County argued that its seal was a protectable mark “because its
letters and symbols signify only one thing: the County of Union and the
services the County provides,” as well as being fanciful/inherently
distinctive. The doctrine says that the
Lanham Act “protects unregistered marks to the same extent as registered marks
because trademark rights emanate from use and not merely registration.” Registration is not a prerequisite for
protection—but validity is. The court
concluded that there was “a difference between a mark that happens to be unregistered, and one that cannot be registered as a matter of law” (emphasis added).
Section 2 was best interpreted as determining that certain
marks “are inappropriate subjects for trademark protection.” It followed that an unregistrable mark was
not actionable under §43. There are no
cases finding unregistrable marks protected under §43, which made sense because
of the broader purpose of §2 to distinguish “fit from unfit” subjects of
trademark protection. Section 2’s bar is substantive, not a function of the
registration process.
Two Pesos
supported this result, using §2 standards to determine validity in a §43 case. Though §43 is broader than §32, that doesn’t
mean it applies to “a different kind or class of mark.” Justice Stevens’ concurrence further elaborated
that Ҥ43(a) is properly understood to provide protection in accordance with
the standards for registration in §2.” Wal-Mart likewise applied §2 analysis about
distinctiveness to a §43 case. (Consider
whether a deceptive mark could get §43 protection. The court’s reasoning suggests that there’s a
super-unclean hands defense whenever a plaintiff’s mark is itself
confusing/deceptive.)
This all made sense.
Consistency was an “independent virtue”: as McCarthy said, “What the law
does not need is a separate set of different substantive trademark rules
followed in § 43(a) cases.... A plethora of different rules and standards
provides neither predictability nor consistency, both hallmarks of a rational
and democratic legal system.” Plus, the
whole point of §43 was to provide unregistered marks with the same protection as registered
marks. “A mark should not earn extra
protection because it is not registered. The Congressional scheme would be
scrambled if Section 43(a) were used to protect marks that could never have
received any protection as registered marks.”
Thus, Renna’s use could not violate any County trademark
rights; there were none.
Independently, even assuming that the County had trademark
rights, trademark law has a particular purpose, to which it should be confined:
the use of a mark in connection with furnishing goods or services. “Trademark law is not properly employed to
stifle discussion. Microsoft Corporation could not use trademark law to enjoin
a consumer from saying ‘I prefer Apple® to Microsoft®,’ nor could Apple do the
reverse. Such comments simply have nothing to do with protecting a purchaser
mistaking the source of goods.” Use in
the course of criticism is not infringement.
Even if the County considers Renna’s statements inaccurate, trademark law
“protects only against mistaken purchasing decisions and not against confusion
generally,” which must be corrected with counterspeech or, if appropriate, a
libel claim. This rule implements First
Amendment values. And if that’s true of
the limits of trademark as applied to a private company, it is much more so
with respect to a governmental body.
But the court didn’t have to decide any First Amendment
issue, though Renna’s arguments on this point were persuasive. Renna’s use was clearly expressive and
political, “entitled to the highest degree of constitutional protection.” If the US couldn’t criminalize the
desecration of the US flag, “an artful extension of trademark law” to quash
political expression using a county seal would be “both unwarranted and
Constitutionally risky.” Not before the
court was whether a state or municipality could enjoin deceptive misuse of official insignia, as opposed to expressive
statements. The county submitted no
evidence that any viewer had been or was likely to be deceived by Renna’s logo.
Comment: And now we see the sub rosa encoding of a confusion
analysis. But I’d say this makes more
sense than many such moves (*cough*Louboutin*cough*),
since the relevant confusion in an official insignia case would be confusion
about the source of authority. The risk of deceptive use of insignia is not
that people will buy a T-shirt from the wrong person; the risk is that they
will obey or give money to someone believing that someone to be an official/have
official sanction. That’s just not a
trademark concern, but it is reasonably addressed by laws against impersonation.
1 comment:
In holding that a mark that cannot be registered under the Lanham Act equates with a mark that is valid and protectable under federal law, the NJ District Court misread the CAFC’s decision. In In re City of Houston, 731 F.3d 1326, 1331 (Fed. Cir. 2013), the Federal Circuit said:
We note that Houston has other means to prevent "pirates and cheats" from using its city seal to deceive the public. Presumably the city of Houston could pass an ordinance prohibiting such activity. Other legal protections under the Lanham Act may exist as well. See 15 U.S.C. § 1125 [emphasis added].
IMHO, the fact that a mark cannot be registered does not mean it is not entitled to common law protection (including under federal common law).
Mitch Stabbe
Edwards Wildman Palmer
Washington, DC
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