Trademark-Trolling County Government Ordered To Pay $40,000 In Legal Fees

from the you-can't-put-a-price-tag-on-free-speech...-oh-wait dept

Abusing IP law to shut down criticism isn't just for little people. Even governments do it. The County of Union, New Jersey, attempted to quiet a vocal critic by claiming her use of the county's seal violated its trademark.

[Tina] 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 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.

Except the claims were bogus and the county played fast-and-loose with the facts surrounding its trademark registration. [Ruling pdf link]

On July 10, 2010, Defendant applied to trademark the Seal. See id. On October 18, 2010, the United States Patent and Trademark Office (“USPTO”) denied Defendant’s trademark application, finding that 15 U.S.C. § 1052(b) prohibited registration of a United States municipality’s insignia. See id. at *4. Defendant did not appeal the USPTO’s decision within the six-month deadline. Therefore, the USPTO issued a Notice of Abandonment of Defendant’s trademark application on May 16, 2011. See id. at *5. On March 21, 2012, the USPTO rejected Defendant’s untimely appeal, and issued a second Notice of Abandonment of Defendant’s trademark application.

On September 17, 2010, the cease-and-desist was issued, noting the trademark (correctly) as being "pending." But a follow-up letter -- sent after Renna's legal representative informed the county that it could not actually trademark its seal (citing the law listed above) and after the county's registration had been rejected by the USPTO -- shows this local government wasn't above lying to get its way.

In response, Defendant sent McKusick a letter dated April 21, 2011. In the Second Letter, defense counsel claimed the “Seal is in fact now trademarked,” and that Plaintiff’s display of the Seal thus violated both federal and state trademark law.

Judge Michael Hammer calls out the county for its deception.

Notably, the Defendant sent the Second Letter approximately four months after the USPTO had denied its trademark application. Therefore, it implausible that the Defendant did not, or could not reasonably have been expected to know, that the Seal was not a registered trademark. At oral argument on the summary judgment motions, Defendant’s counsel could not explain that obvious contradiction.

So, what happens to lying, trademark-trolling government agencies who get caught trying to shut down critics with bogus claims? Well, they get to pay legal fees. $40,000 worth of legal fees. Awards like these are rarely handed down, but Judge Hammer notes that the county's deception and intimidation tactics makes this one of those "exceptional cases."

After considering the totality of the circumstances, the Court concludes that this case is “exceptional.” Arguably, Defendant legitimately believed that the Seal warranted the same protection as a legally protected mark. Still, there is a significant disparity in the merits of the parties’ respective litigation positions in this case. The record demonstrates that Defendant litigated this case by asserting that Plaintiff violated a registered trademark, which Defendant knew, or should have known, did not exist… Nonetheless, the Defendant, as the District Court described it, “doubled down” and continued to assert trademark violations based largely on federal and state statutes that, by their terms, did not provide trademark protection for the Seal.
[...]

Second, as the District Court noted, the Second Letter “carried the misleading implication that [the Seal was trademarked when] the opposite was the case.” Indeed, when Defendant sent the Second Letter, the USPTO had denied Defendant’s trademark application, and issued a Notice of Abandonment because Defendant did not timely appeal the USPTO’s denial.

Third, as the District Court emphasized, it is “hard to discern any purpose, other than general intimidation, for [Defendant's] citation of [a] criminal statute in an official communication to a citizen, even one represented by counsel.”

Importantly, the court (in its earlier decision in favor of Renna [pdf link]) also notes that even if the registration was valid, Renna's use of the seal was still protected.

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.” “[T]rademark 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.” 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. 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.

If a private company isn't allowed to deploy its IP rights to shut down criticism, quite obviously a government entity shouldn't be allowed to, either. Especially when doing so means attempting to shut down protected speech.

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. Consider that the First Amendment prohibits a State from criminalizing the desecration of the United States flag as a form of political protest. 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.

Because of its deceptive attempt to intimidate Renna into removing a non-trademarked county seal (while citing trademark law), the county is now handing $40,000 of its constituents' money over to one of its most vocal critics. If that's not a misuse of public funds -- especially when you add in the money spent by the county to pursue the lawsuit against Renna -- and authority, then I don't know what is.

Filed Under: new jersey, tina renna, trademark, trolling, union