Posted on Flickr by Larry Page. License: CC BY 2.0.
If you’re ever driving north through Michigan, particularly during the autumn leaf season, I highly recommend taking the popular “scenic route,” that is, the route bordering the shore of Lake Michigan along the Leelanau Peninsula, following State Highway M-22. Last year, Highway M-22 was voted into first place among a USA Today top-ten ranking of the “best scenic autumn drives” in the nation. On such a drive, aside from the beautiful landscape of fall colors and the breathtaking views of Lake Michigan, you may notice the numerous “M22” route marker signs, such as the one pictured to the right.
One Michigan company, by the name of (you guessed it) M22, has capitalized quite successfully on the popularity of the M-22 route. M22 sells a wide variety of merchandise bearing the M22 mark, such as clothing, hats, stickers, magnets, glassware, wine, and more. M22 has been granted several federal trademark registrations, including an “M22” word mark and several M22 design marks. The design marks are, unsurprisingly, quite similar to actual signs on State Highway M-22. Pictured below is M22’s design mark under U.S. Registration No. 3992159.
U.S. Registration No. 3992159
Not everyone has been content with the success of the M22 business and the M22 trademark. The State of Michigan decided to replace every single M-22 route marker sign (at a cost of roughly $325-350 per sign) with new “22” signs (without the “M”). The change was reportedly made to combat theft (roughly 90 signs stolen in a 3-year period) due to the popularity of the M22 brand.
A few years ago, the Michigan Attorney General issued an opinion letter, stating that because the M-22 signs are in the public domain, the M22 design should not be subject to trademark protection. M22 disagreed, stating on its website that the Attorney General’s opinion was “incorrect and poorly researched.” M22’s website provides an in-depth legal argument about the validity of its M22 trademarks, as well as counterarguments against the Michigan Attorney General’s opinion. M22 argues that under Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (2003), a business may draw upon an image from the public domain, make it its own, and obtain trademark rights by selling goods or services bearing that image. M22 also asserts that numerous trademarks incorporate public domain works, such as the Disney trademark SLEEPING BEAUTY, and other road-sign trademarks, such as US-1. According to one search conducted by a trademark practitioner in 2012, nearly 800 federally registered trademarks depict stylized versions of road signs.
In 2013, after the opinion letter, the State of Michigan filed a Petition for Cancellation of the M22 design mark before the Trademark Trial and Appeal Board (TTAB), presenting numerous arguments, including: the M22 mark falsely suggests a connection to the State of Michigan; the mark is primarily geographically descriptive; the mark consists of an insignia of a State, specifically Michigan; and several other arguments. This cancellation proceeding is still ongoing, after 58 docket entries spanning nearly three years. Most recently, the TTAB issued an order last month denying Michigan’s motion for partial summary judgment. Based on the trial schedule set forth in that order, the proceeding should conclude within the next year.
Aside from the TTAB proceeding, a new development recently arose in federal district court. A few weeks ago, the State of Michigan filed a civil lawsuit against M22, asserting a new argument based on federal highway regulations. Michigan argues that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited under the Manual on Uniform Traffic Control Devices (MUTCD). More specifically, Michigan argues that the Federal Highway Administration promulgated a MUTCD standard under which any road signage designs (“traffic control devices”) required by the MUTCD on federally funded highways, including the M-22 signs, are in the public domain and “shall not be protected by patent, trademark, or copyright.” The case is Michigan v. M22 LLC, No. 1:16-cv-01084 (W.D. Mich.).
This contentious trademark dispute between Michigan and M22 presents interesting questions, including the extent to which trademark protection may arise from “public domain” words and images, such as those found on state-issued road signs. It also presents the question of whether a mark is geographically descriptive (i.e., consumers would likely associate the goods sold as originating from a geographic place described by the mark) merely because the mark has letters, numbers, or designs similar those on a road sign (see Trademark Act Section 2(e)(2)); and whether design marks originating from state-issued road signs present a false connection with that state (see Trademark Act Section 2(a)) or constitute the “insignia” of the state (see Trademark Act Section 2(b)). Finally, the recent federal lawsuit raises new questions about the intersection of federal highway regulations and the registerability of marks related to highway signage.
Based on the significant number of trademarks related to road signs, the answers to these questions at the conclusion of the TTAB proceeding and the federal lawsuit could be significant for many trademark owners. Stay tuned for further updates on this dispute.