Late last year, in a matter of first impression, the Federal Circuit affirmed the Trademark Trial and Appeal Board and held that the city of Houston could not register its official municipal seal with the United States Patent and Trademark Office (USPTO). The basis for this decision was 15 U.S.C. § 1052(b), which forbids trademark registration for the “flag or coat of arms or other insignia of . . . any State or municipality.”

The city of Houston had argued that the statute’s purpose was to prevent public confusion as to the source of municipal goods and services whereas, by contrast, Houston’s legitimate use of its own seal would create no confusion. Houston further argued that Registration would help prevent the misuse of the seal by “pirates and cheats.” However, the Federal Circuit held that the language of the statute clearly prevented any registration of the seal, even by its owner. The Court reassured the city in dicta that protection against “pirates and cheats . . . may exist” under Section 43(a) of the Lanham Act, which provides protection against the use of unregistered marks to falsely suggest sponsorship or affiliation, or to otherwise create confusion.

But in a recent decision, the District of New Jersey suggested that even that limited avenue of relief may not be available.

Tina Renna and Hannah Caldwell

Tina Renna is a journalist in Union County, New Jersey, just south of Newark. She writes for The County Watchers blog and hosts a public access television program called Union County Citizen’s Forum, which seeks “to shine a critical light on the workings of the Union County Board of Chosen Freeholders.”

The logo for Renna’s program, consistent with its stated purpose, features a spotlight shining onto the Union County Seal. The seal, one of the most interesting municipal insignias in the country, depicts the 1780 murder of Hannah Caldwell, the wife of “rebel pastor” James Caldwell, at the hands of British soldiers during the Battle of Connecticut Farms.

Union County’s Law Suit

In 2010, Union County officials decided to put a stop to Renna’s use of the seal for a program not officially affiliated with — and critical of — the municipality. Union County filed an application to register its seal with the USPTO, and then sent a cease-and-desist letter to Renna. Even after the trademark application was rejected by the USPTO, the County continued to send cease and desist correspondence to Renna, insisting that the seal enjoyed federal protection. In 2011, with the parties at an impasse, Renna filed a declaratory judgment action in the District of New Jersey.

Union County Seal Not Protected Under Section 43

Judge Kevin McNulty issued his opinion on Renna’s motion for summary judgment on May 29, 2014. Not surprisingly, Judge McNulty followed the Federal Circuit as to the interpretation of 15 U.S.C. § 1052(b). He held that Renna could not be liable for infringement of a registered mark under Section 32 of the Lanham Act, because the mark in question could not be registered.

However, Judge McNulty also declared that Renna likewise could not be liable even for infringement of an unregistered mark under Section 43(a) of the Lanham Act. Without reference to the Federal Circuit’s dicta, Judge McNulty held that, even though registration is not a prerequisite for a Section 43(a) action, the unregistered mark in question still has to be a valid and enforceable one. “As to that issue,” the Judge continued, “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.” Judge McNulty held that the former is actionable under Section 43(a), but the latter is not.

So Do Municipal Seals Get Any Protection?

There is an obvious conflict between the Federal Circuit’s dicta and Judge McNulty’s ruling. A municipality seeking to protect itself against “pirates and cheats” could argue that Judge McNulty’s opinion is an example of bad facts making bad law. As Judge McNulty recounted, Union County officials were trying to use trademark law to “stifle” the First Amendment rights of citizens and, in service of that impermissible objective, made multiple “misleading” statements of fact and law in its cease-and-desist letters. Additionally, Judge McNulty was careful to point out that, even if the seal had been protectable as a trademark, Renna did not infringe it because her use was for expressive political speech and not a use in commerce.

Thus, it remains to be seen whether, in less egregious circumstances, other courts may employ Section 43(a) to extend least some federal trademark protection to municipal seals and similar unregistrable matter.

As for Renna, Union County has not appealed the decision, and her motion for attorneys’ fees is under advisement.