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Experts say company’s trademark claims on M-22 don’t hold water

October 18, 2016

Two experts in intellectual property law have told MIRS they don’t believe the marker for Michigan’s renowned M-22 highway can be trademarked.

The state, through the office of Attorney General Bill SCHUETTE, is looking to put an end to one company’s claim of a trademark to the highway sign once and for all, after more than four full years since Schuette first issued an opinion that the sign should not be subject to trademark. 

His office has been in a protracted battle with the company, M22, LLC, which has made millions from the extensive merchandising of the logo on a whole host of products. 

The company, owned by two brothers who are former kiteboarders, have also prevented competitors from hawking similar products through a litany of cease-and-desist letters. 

The fight first began in earnest in December 2013 when Schuette’s office filed a petition for cancellation with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). 

In their petition, they argued the sign was an insignia of the state and barred from trademark, similar to the Great Seal of the United States. 

They claimed it’s a symbol of governmental authority as defined by the Manual on Uniform Traffic Control Devices (MUTCD). The Attorney General’s office also argued the trademark points “uniquely and unmistakably” to state government, falsely suggesting a connection. 

But the company, through its representation by the firm Revision Legal, which also filed for the trademark, responded by arguing the sign is merely a function device, and not an insignia, and that “the sign has come to represent and describe the culture of Northern Michigan.” 

They argue the sign is more representative of a lifestyle than a highway — although motorists looking for directions may think otherwise. 

Revision Legal, and the lawyer that represents the two brothers who own the trademark and M22 LLC, John DI GIACOMO, did not return requests for an interview. 

Regardless, their rebuttal created enough of a factual dispute with the state’s argument to require a potentially lengthy trial at the TTAB that could extend into May 2017. 

Now the state has switched tactics and filed a civil suit, first in circuit court in Ingham County but now in federal court in Grand Rapids, in the apparent hopes of getting the trademark invalidated more quickly. 

They have argued a provision in the MUTCD standard prohibits the trademarking of state road sign designs, and are violating federal law by refusing to remove the trademark. 

Eric GOLDMAN, a leading expert in intellectual property law and director of the High Tech Law Institute at the Santa Clara University School of Law, doesn’t think the company stands a chance of retaining their copyright. 

After reviewing the suit, he said he was “quite surprised the trademark was granted in the first place.” He said the majority of experts would share his stance. 

“To me it seemed crazy that a business was able to get a trademark registration for a government symbol, and so to me the trademark looked invalid on its face because of the fact it was trying to co-opt a government resource,” Goldman said. “The fact it was a third-party business, not the government claiming the trademark, that makes it in my opinion a very easy case that the trademark is inappropriate and should not be protectable.” 

But John ROTHCHILD, a professor at Wayne State University’s law school and another trademark law expert, said the federal suit may get complicated because “it’s a question about the status of this manual as a legal matter . . . it’s just not trademark law.” 

Rothchild said he is unsure whether the state’s angle with the MUTCD will succeed. Both Rothchild and Goldman said they haven’t encountered this type of case before, involving the trademark of a highway sign. 

Rothchild believes the state is seeking the declaratory judgment now to bring before the TTAB and clear up the factual dispute related to the MUTCD, and have the trademark canceled. The TTAB proceeding was suspended by the filing of the civil suit. 

“I assume that’s why the state is now bringing this lawsuit, it’s in order to establish that this registration now was illegal and in violation of this manual,” Rothchild said. “They just want the (federal) court to say this is illegal, so they can go back to the Board and say ‘OK, we’ve proven this is illegal so now we want you to cancel the registration on the grounds that this was not lawful use in commerce.’” 

He said the trademark itself is unusual, because to register the trademark “you have to use the trademark in commerce with a particular good or service,” and a mark that is functional and serves a utilitarian purpose can’t be registered under trademark law and “if I was arguing it from the state’s perspective, I would’ve raised that argument.” 

“It’s functional — it doesn’t just point to the source of a good or service, it’s actually needed for a utilitarian purpose,” Rothchild said. “If the M22 corporation or whatever their name is actually gets an enforceable trademark and can prevent the state then from using it on its signs — which it should be able to if it has a trademark — then the state has no way to communicate to the users of the roads to know what the designation of the road is.” 

On the company’s website, a page is devoted to defending their intellectual property. 

They called Schuette’s 2012 opinion “incorrect and poorly researched,” and explains their defense of the trademark is “to ensure that consumers are not confused into believing that copycat and counterfeit goods originate from M22, LLC . . . and it takes steps to ensure that consumers can continue to expect quality goods when they reach for goods bearing the M22 mark.” 

Until this point, though, the company has hefted the authority of its trademark solely through the threat of legal action and has never taken anyone to court over its use. 

Goldman echoed Rothchild’s sentiment about functionality as a reason why he doesn’t believe the trademark is legitimate. 

“Even if there is a valid trademark, it seems unlikely it would be enforced by any court, because of the fact that we’re all allowed to use the same highway, the same symbol, to communicate with each other,” he said. “That’s why I’m a little skeptical. Whether you say there’s an invalid trademark, or that you can get it trademarked but it can never be enforced — the net result should be the same.” 

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