Renna v. County of Union

When a mark cannot be registered because it is not a suitable, protected mark a claim for trademark infringement cannot be brought under Section 43 of the Lanham Act.

Opinion (McNulty): Tina Renna (Renna) operates a public access show in Cranford, NJ that states that its mission is “to shine a critical light on the workings of the Union County Board of Chosen Freeholders.” Union County (County) sued for trademark infringement for Renna’s use of the county seal in her show’s icon. During the events leading up to the trial County was in the process of registering the county seal as a trademark but the application was denied “because it is an insignia of a state or municipality.” When seeking protection of a trademark under the Lanham Act 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.” The county failed to meet the first element due to the bar against registering a government insignia. The Lanham Act protects unregistered trademarks; however it does not protect marks that cannot be registered as a matter of law. Marks that are unregistrable cannot be registered because “it is not a suitable, protected mark” and therefore a municipal seal is not protected under Section 43 of the Lanham Act. As a result the County's motion for summary judgment was DENIED and Renna's motion for summary judgment was GRANTED.