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 onall 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

Freeholders.

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
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.

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.

2
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 sufficientto 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).

Cross-motions for summary judgment must be analyzed separately

under those standards. The denial of one side’s motion, for example, does notimply 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 atthe 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
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 asdiscussions. P1. SUMF ¶ 3.

Union County, as authorized by State law, has a registered official

Seal. 2 The Seal is displayed at County and Freeholder meetings and on allCounty buildings and cars. The Seal is used on County correspondence, onevery official County document, and on commercial contracts with vendors to

signify the County’s involvement. Docket No. 24-2, Defendant’s SupplementalStatement 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 illuminatethe 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.

2 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, “rebelpastor” 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.

http:/ /hannah.twpunionschools.org/

4
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 uneditedmeetings 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 thebenign (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

5
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 ona 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. (Seeappendix 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, 3sent a letter on behalf of Renna to Mr. Barry, the Union

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’sclaim of infringement was chilling Renna’s exercise of her First Amendment

rights. The letter requested that “the County withdraw its demand thatChannel 35 and programming producers, such as Ms. Renna, cease and desistdisplay of the Seal of the County of Union as the County has no right toprevent use of the Seal under trademark laws. . . .“ Def. SUMF ¶ 9; P1. SUMF ¶

16; Compl. Exhibit B (April 5, 2011 Letter).

3 According to its website, The Rutherford Institute “provides free legal services topeople whose constitutional and human rights have been threatened or violated.”

https://www.rutherford.org/about/ (last visited May 20, 2014). The website discussesFirst Amendment, privacy, and other issues.

6
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 Noticeof 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, 4and 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.2d852, 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 noparticular consequence to the issues discussed here, and I use the terms

interchangeably.

7
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.” 6There is no

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 = 15 U.S.C. § 1052 Lanham Act Section 32 = 15 U.S.C. § 1114

Lanham Act Section 43 = 15 U.S.C. § 1125

6 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
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). 7The syntax is negative, but thesense 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.

9
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

The

speaks

Lanham

in terms

Act,

of

said

the

the

nature

Court,

of the

must

insignia,

be read

not

according

the identity

to its

of

terms,

the applicant. 8

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

8 The defmitional section of the Act, too, encompasses government entities, not distinguishing them from other classes of “applicant.” In Re City ofHouston, 731 F.3d

at 1331 (citing Lanham Act Section 45, 15 U.S.C. § 1127).

9 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 ofHouston, 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.

10
e 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- 13-

29(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
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 forinfringement 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’scease-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 maydeprive the mark’s owner of certain advantages, but is not a legal barrier to

trademark protection. 11An unregistered mark may be established by use, and

protected from false designation of origin and false advertising under Section

43(a).’ 2

11 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 facieevidence 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).

12 (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—

12
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
Defendant cites no case in which an unregistrable mark nevertheless

has been afforded protection under Section 43(a), 15 U.S.C. § 1125(a). Thatdearth of authority is easily explainable. The Section 2 restrictions serve abroader 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 unregistrablebecause 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 43cases. The Court acknowledged that Section 43(a) “prohibits a broader range ofpractices than does § 32,” and of course section 43 does not require that themark be registered. 505 U.S. 763 (1992) (citation omitted). But that does notimply 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 thegeneral 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

13 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:

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 sameprotections to unregistered marks as were already afforded to registeredmarks. 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 ofthe 1988 legislation bolster the claim that an inherently distinctive trade

14
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 UnfairCompetition § 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 oftrademark 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.

14 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 anti- dilution provision does explicitly incorporate the concept of “distinctiveness.”

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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 sofar 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”

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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

another tsmark 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 doesnot 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 anaction 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

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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 mattersof 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.’ 5But be

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.

15 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.

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ghts 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

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APPENDIX