It’s Outrage Week!
I know this is hard on the heels of my take on an outrageous attempt to leverage a dicey trademark registration into some settlement money, but at least there, you could admire the guy’s chutzpah. What I want to talk about today is willfully ignorant bullying—by government officials.
Defending the Honor of the Murderous Seal
Anyway, Union County, New Jersey, like other counties in the United States, has a nice little seal. Here it is.
Isn’t it precious? I like the colonial-era house and—wait—what’s that? I think that’s a redcoat shooting at someone? That’s not nice. Well, I’m sure there’s an interesting story behind it. Indeed, there is. It depicts the killing of Hannah Caldwell during the Revolutionary War at the hands of a British soldier. At the time, New Jerseyans were wavering about which side to support, and the news of her murder tipped the scales in favor of the Revolution. One suspects a bit of propaganda was involved, but so it goes.
A political activist, Tina Renna, has a local-access program in Union County. I don’t know and don’t care what her political affiliation is, but she used the program to criticize Union County officials, and she prominently displays the Union County Seal—murder and all—on her program. Her program apparently she put some noses out of joint. It was possible, I suppose, that someone coming across her program would have thought it was an official broadcast of Union County.
To shut Ms. Renna up— Sorry. To prevent people from confusing Ms. Renna’s program with an official Union County program, the Union County’s lawyers sent Ms. Renna a cease-and-desist letter. The lawyers were the County’s “in-house” lawyers, so they may not have known much about trademark law. And they didn’t ask anyone about trademark law. They just sent the letter.*
* Which includes this bit of nonsense. “Please be advised that the County Seal is also a pending trademark, [sic] therefore you are committing trademark infringement.”
Well, they actually did a bit more than that. Just before they sent the letter, they applied to register the county seal with the United States Patent and Trademark Office. Now, it will warm the cockles of any trademark lawyer’s heart that, after all these decades, markholders still want to register their marks! However, shortly after the letter was sent, the USPTO rejected the trademark application. This not entirely unexpected because you can’t register a mark that “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.” 17 U.S.C. § 1052(b).
In short, you can’t register county seals. Every trademark attorney in America knows that.
Apparently chastened by this refusal, the County let the application go abandoned. After suffering some indirect harassment, Ms. Renna hired a pro bono attorney (associated with this outfit). I don’t think the lawyer was strictly speaking a trademark lawyer, but that didn’t really matter because 17 U.S.C. § 1052(b) isn’t secret, mysterious or difficult. That lawyer wrote to the County’s counsel how government insignia can’t be registered or be enforced as a trademark, and that the County should just back off.
The County’s counsel responded with something remarkable, even for a government official: a bald lie: “For your information, this Seal is in fact now trademarked.” Assuming that by “trademarked” the counsel meant “registered,” this was verifiably not the case. Did he not know that Ms. Renna’s counsel was as capable of looking up the docket sheet on the application? Who was this supposed to fool?
In addition, in a way only a lawyer would find sly, the County’s counsel threatened Ms. Renna with criminal prosecution: “[New Jersey Statutes Annotated] § 56:3–13.29(c) [sic, –2(c) was meant] prohibits a third party, such as your client, from registering a mark that uses [an official seal of a county]. Indeed, N.J.S.A. § 52:2–4 makes unauthorized use of the State seal a crime.”
These are both falsehoods, as anyone with access to New Jersey Statute Annotated—i.e., roughly any lawyer—can tell you. N.J.S.A. § 56:3–13.2(c) specifically exempts municipal insignia from trademark registerability, just like the U.S. law. And N.J.S.A. § 52:2–4 applies only to the State Seal of New Jersey, and the fine is $50 (and the law is probably unconstitutional anyway). Again, since anyone can look up these statutes, who is the County’s counsel trying to fool here?
Meanwhile, at the time this response was made, the County was hard at work ignoring the USPTO’s rejection of its application. Then, after abandonment was entered, the County was hard at work reviving the application, I think mostly so it could tell the press that it was pursuing the application. After the application was revived, the USPTO immediately rejected it again, and the County again let it go abandoned. The application is now quite dead.
Ms. Renna Decides She’s Had Enough
Ms. Renna sued the County, seeking a declaration that, contrary to what the County had threatened, she was infringing neither a registered nor an unregistered trademark*. In an opinion issued last Friday, the court agreed with Ms. Renna and issued her just such a declaration.
* Remember that trademarks need not be registered to be enforceable.
Since the County emphatically didn’t have a registration, the ruling on the first issue was a foregone conclusion, and the County didn’t really contest it. Instead, it focused on protection afforded to unregistered marks. However, that didn’t allow it to escape its problems with registerability because, under U.S. law (and the law of most states), the protection afforded unregistered marks is no broader than that afforded registered marks. That means it can’t duck the law’s prohibition against registering municipality insignia.*
* I’ve always understood that the prohibitions against registerability do nothing more than codify existing common law, which means that the Lanham Act is a pretty good proxy for a claim brought under state common law. But I wonder about “scandalous” marks (i.e., a mark that incorporates a swear word or rude gesture)—is it really the case that vulgar marks are not only unregisterable but also unprotectable?
The County hung its hat on N.J.S.A. § 40A:9–66, which requires county clerks to have an “official seal.” The County asserted that this bit of bureaucratic fluff (county clerks have to have seals—who knew?) overrides any prohibitions against granting trademark protection to municipal insignia: “Therefore, it is well-established that the County, specifically the county clerk, is the owner of the Seal and the the Seal is a symbol used to identify services provided by the County.”
The court rejects these arguments.
Can a mark that is unregisterable under Section 2 of the Lanham Act [governing the registerability of trademarks] nevertheless support a cause of action under Section 43 [protecting unregistered marks]? I am persuaded that Section 2 declares certain marks to be unregisterable because they are inappropriate subject for trademark protection.
Since Section 2 of the Lanham Act prohibits the registration of municipal insignia, it follows that there is no trademark protection for municipal insignia.
Finally, the court addresses a third cause of action: Ms. Renna’s use of the seal was protected by her right to free expression of the First Amendment. Although it had already mooted this cause of action by ruling in her favor on the trademark claims, the court signaled how it would have ruled:*
Renna is clearly using the County Seal in an expressive manner. That expression, moreover, is political expression, entitled the highest degree of constitutional protection. See Thomhill Alabama, 310 88, (1940) freedom speech and 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 the United States flag as a form of political protest. Texas Johnson, 491 397 (1989); see also United States Eichman, 496 U.S. 310 (1990) (federal flag-burning Should a county, by means an artful extension of trademark law, be permitted to quash political expression that uses its Seal? think such an extension would be both unwarranted and Constitutionally risky.
* The court leaves open the possibility of a state law or local ordinance designed to prevent the use of the seal to deceive and cheat the unwitting, but my sense he means fraudulent uses, not merely confusing uses.
I’m sorry Ms. Renna had to go through this, even if her lawyers worked pro bono, but you have to admit, this is a pretty satisfying ending.
Thanks for reading!