RENNA v. THE COUNTY OF UNION, NEW JERSEY

Filing 32

OPINION fld. Signed by Judge Kevin McNulty on 5/29/14. (sr, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

TINA RENNA,

Civ. No. 2:11-3328 (KM)(MAH)

Plaintiff,
OPINION
V.

THE COUNTY OF UNION, NEW JERSEY,
Defendant.

KEVIN MCNULTY, U.S.D.J.:
This matter comes before the Court upon cross motions for summary
judgment brought by the Defendant, The County of Union, New Jersey, Docket
No. 20, and by the Plaintiff, Tina Renna, Docket No. 23. All fact discovery has
been completed, see Docket No. 13, the motions are fully briefed, and I heard
oral argument on May 29, 2014. I find that there are no genuine material
factual disputes and that Plaintiff is entitled to judgment as a matter of law.
Defendant’s motion is denied and Plaintiff’s motion is granted (although not on
all of the grounds she asserts).
Renna produces a public access television show in Cranford, NJ, called
the “Union County Citizen’s Forum.” The show displays on-air a graphic
illustration depicting the Seal of the County of Union with a spotlight shining
on it. The illustration symbolizes the self-proclaimed mission of the show to
shine a critical light on the workings of the Union County Board of Chosen
Freehold ers.
The County responded through its attorneys. The County Attorney sent a
cease-and-desist letter to the Township of Cranford warning it to stop
displaying the County of Union seal, except in broadcasts of Freeholders’
meetings. According to the County, Renna’s use of the Seal infringes the
County’s trademark rights under the Lanham Act.
Whether the County has tried to bully a constituent is for the public to
decide. The issues before me primarily involve the proper scope of trademark

law. Renna has sued seeking a declaratory judgment pursuant to 28 U.S.C. §
2201’ that: (1) Union County has no trademark rights with respect to its
official Seal; (2) Renna’s display of the seal in connection with her television
show does not constitute trademark infringement; and (3) Union County
deprived Renna of her First Amendment rights when it threatened to enforce
trademark laws against her. Because I decide the first two issues in Renna’s
favor, it is unnecessary to rule definitively on the third, although I touch on it
in the final section of this opinion.
I.

DISCUSSION
A. Summary Judgment Standard

Federal Rule of Civil Procedure 56(a) provides that summary judgment
should be granted “if the movant shows that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a matter of law.”
Fed. R. Civ.P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248; Kreschollek v. S. Stevedoring Co., 223 F.3d 202, 204 (3d Cir. 2000). In
deciding a motion for summary judgment, a court must construe all facts and
inferences in the light most favorable to the nonmoving party. See Boyle v.
County of Allegheny Pennsylvania, 139 F.3d 386, 393 (3d Cir. 1998) (citing
Peters v. Delaware River Port Auth. of Pa. & N.J., 16 F.3d 1346, 1349 (3d Cir.
1994)). The moving party bears the burden of establishing that no genuine
issue of material fact remains. See Celotex Corp. v. Catrett, 477 U.S. 317, 322—
23 (1986). “[W]ith respect to an issue on which the nonmoving party bears the
burden of proof
the burden on the moving party may be discharged by
‘showing’—that is, pointing out to the district court—that there is an absence
of evidence to support the nonmoving party’s case.” Celotex, 477 U.S. at 325.
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Once the moving party has met that threshold burden, the non-moving
party “must do more than simply show that there is some metaphysical doubt
as to material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475
U.S. 574, 586 (1986). The opposing party must present actual evidence that
Title 28, United States Code, Section 2201, provides:
(a) In a case of actual controversy within its jurisdiction.
any court of
the United States, upon the filing of an appropriate pleading, may declare
the rights and other legal relations of any interested party seeking such
declaration, whether or not further relief is or could be sought. Any such
declaration shall have the force and effect of a fmal judgment or decree
and shall be reviewable as such.
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creates a genuine issue as to a material fact for trial. Anderson, 477 U.S. at
248; see also Fed. R. Civ. P. 56(c) (setting forth types of evidence on which
nonmoving party must rely to support its assertion that genuine issues of
material fact exist). “[U]nsupported allegations
and pleadings are
insufficient to repel summary judgment.” Schoch v. First Fid. Bancorporation,
912 F.2d 654, 657 (3d Cir. 1990); see also Gleason v. Norwest Mortg., Inc., 243
F.3d 130, 138 (3d Cir. 2001) (“A nonmoving party has created a genuine issue
of material fact if it has provided sufficient evidence to allow a jury to find in its
favor at trial.”). If the nonmoving party has failed “to make a showing sufficient
to establish the existence of an element essential to that party’s case, and on
which that party will bear the burden of proof at trial.
there can be ‘no
genuine issue of material fact,’ since a complete failure of proof concerning an
essential element of the nonmoving party’s case necessarily renders all other
facts immaterial.” Katz v. Aetna Cas. & Sur. Co., 972 F.2d 53, 55 (3d Cir. 1992)
(quoting Celotex, 477 U.S. at 322—23).
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Cross-motions for summary judgment must be analyzed separately
under those standards. The denial of one side’s motion, for example, does not
imply that the other’s must be granted. See Pichler v. UNITE, 542 F.3d 380, 386
(3d Cir. 2008); Goldwell of N.J., Inc. V. KPSS, Inc., 622 F. Supp. 2d 168, 184
(D.N.J. 2009); Clevenger v. First Option Health Plan of N.J., 208 F. Supp. 2d
463, 468-69 (D.N.J. 2002) (citing Weissman v. U.S.P.S., 19 F. Supp. 2d 254
(D.N.J. 1998)).
B. Facts
The facts are largely undisputed. I rely on factual contentions, supported
by affidavits or documentary evidence, that are expressly admitted, or at least
unopposed.
The defendant, Union County, is a governmental entity organized and
existing under the laws of New Jersey. It has its principal place of business at
the Union County Administration Building in Elizabeth, New Jersey. Docket
No. 21, Defendant’s Statement of Undisputed Material Facts (“Def. SUMF”) 2.
¶
The County’s governing body is the Union County Board of Chosen Freeholders
(the “Board,” or the “Board of Freeholders”).
The plaintiff, Tina Renna, is a resident of the Township of Cranford,
which is within Union County. Docket No. 23-2, Plaintiff’s Statement of
Undisputed Material Facts (“P1. SUMF”). Renna, a citizen activist, has been an
3

outspoken critic of the Board of Freeholders. P1. SUMF ¶ 7. Since December
2009, she has produced a local cable television show called “Union County
Citizen’s Forum.” P1. SUMF ¶ 3.
Union County Citizen’s Forum focuses on the governance and political
activities of Union County. Def. SUMF ¶ 3. The show airs on Cranford’s public
access cable television channel, Channel 35. Def. SUMF ¶ 6. A “news and
information show,” it features “reading[s] of the resolutions presented at
meetings of the Union County Board of Chosen Freeholders,” as well as
discussions. P1. SUMF ¶ 3.
Union County, as authorized by State law, has a registered official
2
Seal. The Seal is displayed at County and Freeholder meetings and on all
County buildings and cars. The Seal is used on County correspondence, on
every official County document, and on commercial contracts with vendors to
signify the County’s involvement. Docket No. 24-2, Defendant’s Supplemental
Statement of Undisputed Material Facts (“Def. Supplemental SUMF”) ¶ 1.
Starting at the inception of her local public access television program in
2009, Renna used on-air a graphic illustration containing the Union County
Seal. P1. SUMF ¶ 3. Broadcasts of Union County Citizen’s Forum would display
a representation of the Seal with a theatrical spotlight shining on it. That
graphic illustration was intended to symbolize the show’s mission to illuminate
the workings of County government. It would appear in the background as
Renna read Board resolutions or interviewed guests on the air. Def. SUMF ¶ 7;
P1. SUMF ¶ 4. (See appendix to this opinion at “A” for a copy of the illustration.)
On July 10, 2010, Union County submitted an application to the United
States Patent and Trademark Office (“USPTO”). The application sought to
register the Union County Seal as a trademark. P1. SUMF ¶ 18, Exhibit 1.

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
Caidwell 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. See
www.njstatelib.org/slic files! imported / NJ Information / Digital Collections / NJInTheA
mericanRevolutionl763-1783/9.9.pdf (last visited May 20, 2014). An elementary
school
in
Union
Township
now
bears
Hannah
Caldwell’s
name.
/hannah.twpunionschools.org/
http:/
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On September 17, 2010, Union County Counsel Robert E. Barry sent a
letter to the Township of Cranford (the “cease-and-desist letter”). That ceaseand-desist letter informed Cranford that it was using the Union County Seal
without proper authorization and that such use infringed the County’s
trademark. Def. SUMF ¶ 8; P1. SUMF ¶ 8; Compl. Exhibit A (September 17,
2010 Letter). Here is the pertinent language from the letter:
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.
September 17, 2010 Letter (italic emphasis added in re: line).
This cease-and-desist letter is addressed to the Township of Cranford,
and its wording is somewhat general. There can be no doubt, however,
concerning the “unauthorized usage” to which the letter refers. The re: line
announces that the subject of the letter is unauthorized usage by “Union
County Citizens Forum,” Renna’s television program. P1. SUMF ¶ 9; see
quotation from letter, above. And the letter carefully exempts from its scope the
benign (from the County’s point of view, that is) and authorized use of the Seal
in broadcasts of Board meetings. In short, although Renna is not the addressee
of the letter, the alleged infringing use is clearly Renna’s.
Sometime after September 17, 2010, Renna discussed the County’s
cease-and-desist letter with Ed Davenport, the Channel 35 station manager.
Davenport asked Renna not to use the Seal graphic any longer. P1. SUMF ¶ 11.
At the time of the letter, Renna was not taping new episodes of the show
anyway, because the station was undergoing renovations. P1. SUMF ¶ 11.
On October 18, 2010, the USPTO issued an Office Action addressing the
County’s pending trademark registration application. The Office Action
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provided that registration was “refused because the applied-for mark consists
of an insignia of a U.S. municipality.” The USPTO cited 15 U.S.C. § 1052(b) as
an “absolute bar” to registration on the Principal and Supplemental Registers.
P1. SUMF ¶ 19, Exhibit 2.
In January 2011, renovations to the station were completed, and Renna
resumed taping her show. Because the cease-and-desist letter caused her to
fear liability, Renna replaced the old logo. Instead of a spotlight shining on the
County Seal, the graphic now consisted of a depiction of a spotlight shining on
a photograph of the Union County Manager. P1. SUMF ¶ 13. On February 8,
2011, Renna received an e-mail message from the station manager, Davenport,
relaying a request from the Cranford Township attorney that Renna stop using
the new logo with the image of the County Manager. P1. SUMF ¶ 14. (See
appendix to this opinion at “B” for a copy of the new logo.)
In about February 2011, Channel 35’s management requested that
Renna sign a “Producer Agreement and Indemnification Agreement.” That
Agreement would have required Renna to indemnify the Township of Cranford
for any claims, demands, or lawsuits arising from her television show. P1.
SUMF ¶ 25. The execution of that indemnification agreement, says Renna, was
presented to her as a precondition to further airing of her show. P1. SUMF ¶ 26.
Fearing personal liability, she refused to sign the agreement. P1. SUMF ¶ 27.
Renna decided to seek legal counsel. P1. SUMF ¶ 15.
On April 5, 2011, Douglas R. McKusick, a staff attorney of the
Rutherford Institute, sent a letter on behalf of Renna to Mr. Barry, the Union
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County Counsel who had sent the cease-and-desist letter. In that April 5 letter,
McKusick made several points: that a government insignia is not registrable as
a trademark; that the County’s Seal did not identify a tangible good; that the
alleged infringement did not involve commercial activity; and that the County’s
claim of infringement was chilling Renna’s exercise of her First Amendment
rights. The letter requested that “the County withdraw its demand that
Channel 35 and programming producers, such as Ms. Renna, cease and desist
display of the Seal of the County of Union as the County has no right to
prevent use of the Seal under trademark laws. . . .“ Def. SUMF ¶ 9; P1. SUMF ¶
16; Compl. Exhibit B (April 5, 2011 Letter).
According to its website, The Rutherford Institute “provides free legal services to
people whose constitutional and human rights have been threatened or violated.”
https://www.rutherford.org/about/ (last visited May 20, 2014). The website discusses
First Amendment, privacy, and other issues.
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6

By return correspondence dated April 21, 2011, the County rejected
McKusick’s demand. That letter was signed by Norman W. Albert, First Deputy
County Counsel. Def. SUMF ¶ 10; Compi., Exhibit C (April 21, 2011 Letter).
Albert’s letter opened with an update: “For your information, this Seal is in fact
now trademarked.” In response to McKusick’s arguments, Albert repeated 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.” Albert reiterated that the County “simply is
protecting its official seal, protected by trademark, from direct and
unauthorized use.”
Meanwhile, Union County failed to respond within six months to the
USPTO’s October 2010 Office Action denying registration of the Seal as a
trademark. (See pp. 5-6, supra.) On May 16, 2011, the USPTO issued a Notice
of Abandonment of Defendant’s trademark registration application. P1. SUMF ¶
20, Exhibit 3.
Union County then submitted to the USPTO a petition to revive its
abandoned trademark registration application. P1. SUMF ¶ 21. On August 24,
2011, the USPTO issued a second Office Action, addressing the revived
application. That second Office Action adhered to the October 2010 ruling that
the County Seal could not be registered as a trademark because it is an
insignia of a state or municipality. P1. SUMF ¶ 22, Exhibit 4. Again, the County
did not respond within six months. Again, on March 21, 2012, the USPTO
issued a Notice of Abandonment.
C. Protection Under the Lanham Act
Union County contends that its Seal, which is displayed in many official
contexts, is a service mark, and that as such it is protected from infringement
4

“Service marks,” used to identify the source of services, “are entitled to the
same legal protection as trademarks.” Dranoff-Perlsteiri Associates v. Skiar, 967 F.2d
852, 855 (3d Cir. 1992) (citing 1 Jerome Gilson, Trademark Protection and Practice §
1.02[1][b], at 1—11 (1991)). “Although technically distinct, the terms are often used
interchangeably, with no significant legal consequences.” Id. The distinction has no
particular consequence to the issues discussed here, and I use the terms
interchangeably.

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under the Lanham Act. Docket No. 24-2 ¶ 1 (“Def. Supplemental SUMF”).
5
Renna responds that the seal, which is not registrable under Lanham Act
Section 2, 15 U.S.C. § 1052(b), is not entitled to protection from infringement
under the Act.
As a general matter, to prevail on a claim of infringement of a registered
mark (Lanham Act Section 32) or an unregistered mark (Section 43), a plaintiff
must satisfy three elements: “(1) it has a valid and legally protectable mark; (2)
it owns the mark; and (3) the defendant’s use of the mark to identify goods or
services causes a likelihood of confusion.” A & H Sportswear, Inc. v. Victoria’s
Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000). A plaintiff bears the
burden of proving these elements. Id. The County’s claims fail at step 1:
whether registered or unregistered, the Seal is not a “valid and legally
protectable mark.”

1. Infringement of a registered mark (Lanham Act Section 32)
Section 32 of the Lanham Act, 15 U.S.C. § 1114, creates a cause of
action for deceptively using or counterfeiting “a registered mark.” There is no
6
The Lanham Act is the Trademark Act of 1946, as amended, 15 U.S.C. § 1051
et seq. As is common, I use the Lanham Act section numbers, occasionally providing
parallel citations to the U.S. Code. For the reader’s convenience, here are the main
sections cited, with their U.S. Code equivalents:
Lanham Act Section 2
Lanham Act Section 32
Lanham Act Section 43
6

=
=
=

15 U.S.C. § 1052
15 U.S.C. § 1114
15 U.S.C. § 1125

simplify. The relevant portion of the statute reads as follows:
(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale, offering
for sale, distribution, or advertising of any goods or services on or
in connection with which such use is likely to cause confusion, or
to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered
mark and apply such reproduction, counterfeit, copy, or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles
or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to
8

longer any question that the Seal is not a registered trademark; indeed, the
USPTO has twice declined as a matter of law to register it.
In July 2010, the County first submitted an application for trademark
registration to the USPTO. P1. SUMF ¶ 18, Exhibit 1. That application was
under consideration when the County, in the September 17, 2010 cease-anddesist letter, stated that the mark was “pending.” That was technically true,
but not for long.
By Office Action dated October 8, 2010—some three weeks after the
cease-and-desist letter—the USPTO rejected the County’s registration
application because the Seal is “an insignia of a U.S. municipality.” Such a
mark is explicitly barred from registration on the federal registers pursuant to
Lanham Act Section 2(b), 15 U.S.C. § 1052(b). P1. SUMF ¶ 19, Exhibit 2.
Here the USPTO was on solid ground. Section 2(b) of the Lanham Act
provides:
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused registration
on the principal register on account of its nature unless it—

(b) Consists 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.
Lanham Act Section 2(b), 15 U.S.C. § 1052(b). The syntax is negative, but the
7
sense is clear: such insignia “shall be refused registration.”
The County has proposed that the statute bars registration of insignia
only by nongovernmental parties, not registration by the government body
itself. The USPTO, however, correctly and authoritatively interpreted Section
deceive, shall be liable in a civil action by the registrant for the
remedies hereinafter provided....
Lanham Act Section 32, 15 U.S.C.

§ 1114.

This Section 2(b) bar to registration is one of five listed as Sections 2(a) through
(e). The “insignia” bar dates back to the Trademark Act of 1905, ch. 592, § 5, 33 Stat.
724 (1905), the predecessor of the Lanham Act.
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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.” P1. SUMF ¶ 19, Exhibit 2.
This component of the USPTO’s reasoning, too, was legally sound.
Official insignia are explicitly listed in the statute as items that will be “refused
registration.” That bar to registration is general and categorical, and it does not
exempt government bodies. In Re City of Houston, 101 U.S.P.Q.2d 1534
(Trademark Tr. & App. Bd. Jan. 18, 2012), affd, 731 F.3d 1326 (Fed. Cir.
2013) (upholding USPTO’s refusal to register the Seal of the City of Houston,
Texas). The Federal Circuit reasoned that the Section 2(b) registration bar
speaks in terms of the nature of the insignia, not the identity of the applicant.
8
The Lanham Act, said the Court, 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. 731 F.3d at 1332.
The County did not revise its position in response to the USPTO’s
authoritative rejection; it doubled down. Recall that the previous cease-anddesist letter had stated that the trademark (as conceded at oral argument, this
could only have meant trademark registration) was “pending.” In his April 21,
2011 letter to Renna’s counsel, Albert peremptorily announced: “For your
The defmitional section of the Act, too, encompasses government entities, not
distinguishing them from other classes of “applicant.” In Re City of Houston, 731 F.3d
at 1331 (citing Lanham Act Section 45, 15 U.S.C. § 1127).
8

A Court is bound to implement the words of the statute as enacted, a
proposition that requires little citation. See, e.g., Lamie v. United States Trustee, 540
U.S. 526, 538 (2004) (Kennedy, J.); Anderson v. Wilson, 289 U.S. 20, 27 (1933)
(Cardozo, J.). I note, however, that the lack of any special exemption for government
entities comports with the evident purpose of this bar to registration. 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. As a leading authority explains it, Section
2(b)’s absolute bar is founded upon “the thinking that these kinds of governmental
insignia.
should not be registered as symbols of origin for commercial 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.” 5 McCarthy on
Trademarks and Unfair Competition § 19:78. See also In re City of Houston, supra. And
one can, of course, easily imagine the absurdities that would arise from the trademark
registration of flags and insignia, which are intended to be used by the citizenry.
9

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information, this Seal is in fact now trademarked under federal law.” That
statement carried the misleading implication that some intervening event had
solidified the trademark status of the Seal. In fact, the opposite was the case;
in the interim, the USPTO had categorically rejected the County’s trademark
registration application as a matter of law. (Of course, as discussed below, an
unregistered trademark, too, may be protected, but that was not the import of
the letter.) At oral argument, counsel for the County (not Albert) had no
explanation for this statement, and, to his credit, did not attempt to justi1r it.
To that misleading implication, Albert added another: “N.J.S.A. 56:3- 1329(c) prohibits a third party, such as your client, from registering a mark that
uses such an insignia.” (I take this to be a typo for 56:3-13-2(c).) The State
statute does not say that; it says this:
2. Registrability.
A mark by which the goods or services of an applicant for
registration may be distinguished from the goods or services of
others shall not be registered if it:
(c) consists 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.
N.J. Stat. Ann. 56:3-13.2.
Essentially, the County here attempted to revive, in state-law form, its
rejected position as to federal trademark law. But the state statute, like the
federal one, provides categorically that an official insignia “shall not be
registered.” It contains no exemption for government entities. It is not confined
to “third parties, such as your client.”
Albert’s letter then added the following non sequitur “Indeed, N.J.S.A.
52:2-4 makes unauthorized use of the State seal a crime.” And “indeed” it does,
to the tune of $50.10 But the Great Seal of the State of New Jersey is not at
10

52:2-4. Unauthorized use; penalty
Any person who is not authorized by law to use, exhibit or display the

State Seal, who uses, exhibits or displays the Great Seal of the State of
New Jersey, in whole or in part, is a disorderly person and upon
conviction as such shall be subject to a fine of $50.00.
11

issue here. 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. Again, counsel at oral argument offered no
justification or explanation for Albert’s citation of this statute.
The County, having abandoned its first application through six months
of inaction, renewed its registration application to the USPTO. On August 24,
2011, the USPTO again ruled that Section 2(b) of the Lanham Act barred
registration of the insignia of a State or municipality. P1. SUMF ¶ 22, Exhibit 4.
The County cannot sustain a claim of infringement under Section 32 of
the Lanham Act, 15 U.S.C. § 1114. That section gives rise to a claim for
infringement of a registered mark. The Seal is not now a registered mark, and,
given the double refusal of the USPTO, I suspect it never will be. The Seal has
no registration status, “pending” or otherwise. The stated basis for the County’s
cease-and-desist letter turns out to be illusory.
2. Infringement of an unregistered mark (Lanham Act Section 43)
The County makes an alternative argument under Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a), that the Seal, as an un-registered mark,
enjoys the same protection as a registered mark. Failure to register may
deprive the mark’s owner of certain advantages, but is not a legal barrier to
trademark protection. An unregistered mark may be established by use, and
11
protected from false designation of origin and false advertising under Section
2
43(a).’

For example, registration serves as nationwide constructive notice. 15 U.S.C. §
1072. After five years of continuous use, registration may confer incontestable status.
15 U.S.C. § 1065. See also Lucent Info. Mgmt., Inc. v. Lucent Technologies, Inc., 186
F.3d 311, 315 (3d Cir. 1999) (“federal registration of a trademark is prima facie
evidence of the mark’s validity, the registrant’s ownership of the mark, and its
exclusive right to use the mark in commerce”). But irrespective of registration, the
owner’s property rights in a mark are “established by prior use.” In re International
Flavors & Fragrances, Inc., 183 F.3d 1361, 1366 (Fed. Cir. 1999).
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(a) Civil Action
(1) Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or
misleading representation of fact, which—
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The County contends that its Seal, even if unregistered, is a valid mark.
Every county clerk, it says, must have an official seal, pursuant to N.J. Stat.
Ann. § 40A:9-66. It follows that the county clerk “is the owner of the Seal and
that the Seal is a symbol used to identify services provided by the County.”
Docket No. 19 (“Def. Br.”) at 5. The Seal, says the County, is therefore a
protectable mark, because its letters and symbols signify only one thing: the
County of Union and the services the County provides. The County adds that
the Seal is fanciful and thus inherently distinctive, entitled to strong trademark
protection. Renna’s use of the Seal, it concludes, may mislead the unwary into
thinking her show is connected to County government, and her use of the Seal
may therefore lawfully be halted.
Renna responds that, for the same reasons that the Seal is not
registrable, it is not protected as an unregistered mark under Section 43(a) of
the Lanham Act, 15 U.S.C. § 1125(a). She also contends that there is no
likelihood of confusion because no reasonable person could believe that Renna,
a vociferous critic, spoke for the County or offered County services. Docket No.
25 (P1. Opp. Br.”) at 2. She adds that she used the Seal, not in the commercial
context to which the Act applies, but as a component of protected First
Amendment expression.
“The Lanham Act protects unregistered marks to the same extent as
registered marks because trademark rights emanate from use and not merely
registration.” Duffy v. Charles Schwab & Co., Inc., 97 F. Supp. 2d 592, 598
(D.N.J. 2000). To put it another way, for a Section 43 action, registration is not
a prerequisite. What is a prerequisite, however, is that the unregistered mark
be a valid and protectable one. As to that issue, I think there is a difference
between a mark that happens to be unregistered, and one that cannot be
registered as a matter of law.

(A) is likely to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of
his or her goods, services, or commercial activities by another
person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or
her or another person’s goods, services, or commercial activities,
shafl be liable in a civil action by any person who believes that he
or she is or is likely to be damaged by such act.
Lanham Act Section 43(a), 15 U.S.C.

§ 1125(a).
13

Can a mark that is unregistrable under Section 2 of the Lanham Act
nevertheless support a cause of action under Section 43? I am persuaded that
Section 2 declares certain marks to be unregistrable because they are
inappropriate subjects for trademark protection. It follows that such
unregistrable marks, not actionable as registered marks under Section 32, are
not actionable under Section 43, either.
Defendant cites no case in which an unregistrable mark nevertheless
has been afforded protection under Section 43(a), 15 U.S.C. § 1125(a). That
dearth of authority is easily explainable. The Section 2 restrictions serve a
broader purpose to distinguish fit from unfit subjects of trademark protection.
To put it another way, a mark is not denied registration under Section 2
because of some quirk of the registration process; it is deemed unregistrable
because it is not a suitable, protectable mark. See pp. 9-10 & n.9, supra.
Accordingly, the courts have not employed the Section 2 registrability
analysis merely to bar actions for infringement of a registered mark under
Section 32. To the contrary, they have transplanted Section 2 standards to the
context of unregistered marks under Section 43.
For example, in Two Pesos, Inc. v. Taco Cabana, Inc., the Supreme Court
applied Section 2 standards to determine trademark validity in Section 43
cases. The Court acknowledged that Section 43(a) “prohibits a broader range of
practices than does § 32,” and of course section 43 does not require that the
mark be registered. 505 U.S. 763 (1992) (citation omitted). But that does not
imply that Section 43 applies to a different kind or class of mark. It is “common
ground that § 43(a) protects qualifying unregistered trademarks and that the
general principles qualifying a mark for registration under § 2 of the Lanham
Act are for the most part applicable in determining whether an unregistered
mark is entitled to protection under § 43(a).” Id. at 768.’ That analysis
In his concurrence, Justice Stevens, relying on legislative history, further
elaborated on the importation of Section 2’s requirements into a Section 43(a) case:
13

Congress explicitly extended to any violation of § 43(a) the basic Lanham
Act remedial provisions whose text previously covered only registered
trademarks. The aim of the amendments was to apply the same
protections to unregistered marks as were already afforded to registered
marks. See S.Rep. No. 100—515, p. 40 (1988). These steps buttress the
conclusion that § 43(a) is properly understood to provide protection in
accordance with the standards for registration in § 2. These aspects of
the 1988 legislation bolster the claim that an inherently distinctive trade
14

strongly suggests that a mark that does not qualify for registration under
Section 2 also does not qualify for protection under Section 43(a).
Later, in Wal-Mart Stores, Inc. v. Samara Bros., Inc., the Court applied the
Section 2 “distinctiveness” analysis to a trade dress claim under Section 43(a),
which does not require “distinctiveness.” 529 U.S. 205, 210 (2000). In doing
4
so, it cited Two Pesos’ rationale that qualifications for registration under
Section 2 are generally applicable to unregistered marks as well. Id. (quoting
Two Pesos, Inc., 505 U.S. at 768). See also McCarthy on Trademarks and Unfair
Competition § 27:18 (explaining that when Section 43(a) is used as a federal
vehicle for the assertion of traditional trademark or service mark infringement
claims, “the courts have used as substantive law the traditional rules of
trademark and unfair competition law”).
The application of Section 2 standards to Section 43(a) cases makes
sense. First, consistency has an independent virtue here: “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.” McCarthy on Trademarks and Unfair Competition § 27:18.
Second, as established above, Section 43 is intended to provide unregistered
marks with the same protection provided to 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.
.

.

.

In sum, the Union County Seal does not qualify for trademark protection
as an unregistered mark under Section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a). Accordingly, I find that Renna’s use of the Seal in her graphic
illustration does not violate any trademark right asserted by the County.
dress may be protected under § 43(a) without proof of secondary
meaning.
Two Pesos, Inc., 505 U.S. at 784, 112 S. Ct. at 2765 (Stevens, J., concurring) (footnote
omitted). That reasoning supports the conclusion that Section 43(a) is intended to
provide protection to an unregistered mark in accordance with the requirements set
forth in Section 2.
The Wal-Mart Court was not discussing the protection of a “famous” mark
under Lanham Act Section 43(c), 15 U.S.C. § 1125(c) (added in 1996). That antidilution provision does explicitly incorporate the concept of “distinctiveness.”
14

15

D. Miscellaneous Contentions; Avoidance of First Amendment issue

Ms. Renna also argues that, even assuming arguendo that the County
had trademark rights with respect to the Seal, her use of the Seal did not
infringe the County’s trademark. Her show, carried on a public access channel,
is not a business, and her use of the Seal did not occur in a commercial
context. Rather, she used the seal in connection with exercising her right to
describe and criticize the workings of County government. Such matters, she
says, lie outside the concerns of trademark law.
Even as between private parties, trademark law has a particular purpose,
and it should be confined to that purpose. The foundational concern of
trademark law is “use” of a mark in connection with the furnishing of “goods or
services.” 15 U.S.C. § 1114, 1125. See also Prestonettes, Inc. v. Coty, 264 U.S.
359, 368 (1924) (“A trade-mark only gives the right to prohibit the use of it so
far as to protect the owner’s good will against the sale of another’s product as
his.”); Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203,
205 (1942) (purpose of the Lanham Act is to prevent the use of identical or
similar marks in a way that confuses the public about the actual source of
goods and services). It protects purchasers from being deceived as to the
source of goods.
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.
Case law
supports the proposition that infringing use is only
illegal if it is done in connection with the defendant’s offer or
provision of goods or services. In cases in multiple circuits, courts
have held that individuals who use protected marks in the course
of merely criticizing the trademark holders’ goods or services do
not violate the Lanham Act. See Bosley Medical Institute, Inc. v.
Kremer, 403 F.3d 672, 677-80 (9th Cir. 2005) (comparing and
discussing cases).
...

Howard Johnson International, Inc. v. Vraj Brig, LLC, 2010 WL 215831 at *6
(D.N.J. Jan. 14, 2010) (Thompson, J.). See also L.L. Bean, Inc. v. Drake
Publishers, Inc., 811 F.2d 26, 33 (1st Cir. 1987); Ford Motor Co. V. 2600 Enters.,
177 F. Supp. 2d 661, 664 (E.D. Mich. 2001). But see People for the Ethical
Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001)
(parody/criticism web site met “in connection with goods and services”

16

requirement because its use of PETA’s trademark in its domain name had the
effect of frustrating access to genuine PETA site, and because it linked to some
thirty commercial websites).
A company may feel put upon by statements about itself that it considers
inaccurate. But trademark law is not the solution to that problem; “trademark
infringement protects only against mistaken purchasing decisions and not
against confusion generally.” Bosley Medical Institute, mc, 403 F.3d at 677
(citing Lang v. Ret. Living Pub. Co., Inc., 949 F.2d 576, 582-83 (2d Cir. 1991)).
“[Tirademark rights do not entitle the owner to quash an
unauthorized use of the mark by another who is communicating
ideas or expressing points of view.” L.L. Bean, Inc. v. Drake
Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987). Were we to ignore
the expressive value that some marks assume, trademark rights
would grow to encroach upon the zone protected by the First
Amendment. See Yankee Publ’g, Inc. v. News Am. Publ’g, Inc., 809
F. Supp. 267, 276 (S.D.N.Y. 1992) (“[W]hen unauthorized use of
s
t
another mark is part of a communicative message and not a
source identifier, the First Amendment is implicated in opposition
to the trademark right.”). Simply put, the trademark owner does
not have the right to control public discourse whenever the public
imbues his mark with a meaning beyond its source-identifying
function. See Anti—Monopoly, Inc. v. Gen. Mills Fin Group, 611 F.2d
296, 301 (9th Cir.1979) (“It is the source-denoting function which
trademark laws protect, and nothing more.”).
Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900-0 1 (9th Cir. 2002).

In short, a private company cannot shut down criticism or quash
inaccurate information by prohibiting the use of its trademarked name. It must
content itself with, for example, corrective public statements of its own, or an
action for libel with respect to false statements.
When the supposedly aggrieved party is not a company but a
governmental body, the Mattel concerns are writ large. In general, the First
Amendment imposes more stringent limitations on the government’s ability to
restrain expression. Renna cogently contends that the County’s assertion of
trademark rights gives rise to a substantial First Amendment issue. That
constitutional issue, however, is easily avoided by simply giving the words of
Section 2(b) registration bar their plain meaning and scope. In doing so, I am
influenced by the familiar principle that “[w]hen the validity of an act of the
Congress is drawn in question, and even if a serious doubt of constitutionality
is raised, it is a cardinal principle that this Court will first ascertain whether a
17

construction of the statute is fairly possible by which the question may be
avoided.” Crowell v. Benson, 285 U.S. 22, 62, 52 S. Ct. 285, 296, 76 L. Ed. 598
(1932). See also Ashwander v. TVA, 297 U.S. 288, 347 (1936) (Brandeis, J.,
concurring); Antonin Scalia and Bryan A. Garner, Reading Law: The
Interpretation of Legal Texts, 247-5 1 (Thomson/West 2012).
Renna is clearly using the County Seal in an expressive manner. That
expression, moreover, is political expression, entitled to the highest degree of
constitutional protection. See Thomhill v. Alabama, 310 U.S. 88, 101 (1940)
(“The freedom of speech and of the press guaranteed by the Constitution
embraces at the least the liberty to discuss publicly and truthfully all matters
of public concern....”). Consider that the First Amendment prohibits a State
from criminalizing the desecration of the United States flag as a form of
political protest. Texas v. Johnson, 491 U.S. 397 (1989); see also United States
v. Eichman, 496 U.S. 310 (1990) (federal flag-burning law). Should a county, by
means of an artful extension of trademark law, be permitted to quash political
expression that uses its Seal? I think such an extension would be both
unwarranted and Constitutionally risky.
I leave for another day the question of whether a state or municipality
may enjoin deceptive misuse of official insignia. The State should not be
powerless to address such a case, particularly if it specifically targets deceptive,
as opposed to expressive, statements. See In re City of Houston, 731 F.3d at
1331 (“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.”) The County has argued
that a viewer could be misled by Renna’s “spotlight” logo, but has not
submitted any evidence that anyone was, or was likely to be, deceived.’ But be
5
that as it may, the County has failed to meet its threshold burden of
demonstrating that trademark law is an appropriate vehicle for its complalnts
about Ms. Renna’s use of its Seal.
At oral argument, both sides cited Rothamel v. Fluvanna County, 810 F. Supp.
2d 771 (W.D. Va. 2011). I do not find Rothamel particularly persuasive either way,
because it dealt with a different set of issues. There, the county did not seek to assert
trademark protection, but to enforce an ordinance against the unauthorized use of its
seal. The court held that the ordinance, as applied to defendant’s internet blog (which
reported on county affairs and used the county seal), exceeded the permissible bounds
of the First Amendment. Id. at 787. There, the defendant’s use of the seal clearly fell
within the scope of the ordinance, and the court was therefore required to decide
whether enforcement of the ordinance violated the First Amendment. Because I find
that Renna’s use of the seal does not fall within the scope of the trademark law
asserted by the County, I do not reach the First Amendment issues.
15

18

The County Seal cannot be deemed a protectable trademark or service
mark under Section 32 or 43 of the Lanham Act. Finding that the County
possesses no valid claim, I will grant Plaintiff’s motion for summary judgment
consisting of a declaration that her use of the County Seal in connection with
her television program does not violate any valid trademark. I do not reach her
request for a declaratory judgment that the County’s assertion of trademark
rights would violate her First Amendment rights; because I have declared such
a trademark claim invalid, the freedom of speech issue becomes moot.

III. CONCLUSION
For the foregoing reasons, Defendant’s motion for summary judgment is
DENIED. Plaintiff’s motion for summary judgment is GRANTED.
Pursuant to 28 U.S.C. § 2201 and 2202, I will enter a judgment
declaring that: (1) Union County has no trademark or service mark rights or
protections with respect to the Seal of Union County and (2) Renna’s display of
the Seal of Union County in connection with her television show, Union County
Citizens’ Forum, does not constitute trademark or service mark infringement.
An appropriate order will be filed with this Opinion.
Dated: May 29, 2014

KEVIN MCNULTY
United States District Judge

19

APPENDIX

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