My first post on this blog, nearly two years ago, was about a trademark dispute between the State of Michigan, and a Michigan company, M22, LLC.  M22 sells a variety of merchandise bearing an “M22” mark that appears similar to the route marker signs on Michigan Highway M-22, see photos below.

U.S. Registration No. 3992159

Posted to Flickr by Larry Page. License: CC BY 2.0.

M22 was granted several federal trademark registrations, including an “M22” word mark and several M22 design marks. The dispute escalated began back in 2013, when Michigan filed a petition for cancellation at the Trademark Trial and Appeal Board (TTAB) on several grounds, including that the registration violates federal regulations related to the Manual on Uniform Traffic Control Devices (MUTDC) (among several other grounds which are now less relevant). In August 2016, the TTAB denied Michigan’s motion for summary judgment.

Shortly after the TTAB denied summary judgment, Michigan turned to a different venue, filing a lawsuit in Michigan state court (ultimately resulting in suspension of the TTAB proceeding), against M22 seeking declaratory relief. M22 quickly removed the case to federal court. In its complaint, Michigan alleged that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited based on Federal Highway Administration standards under MUTCD, which provide that any road signage designs (“traffic control devices”) required on federally funded highways, including the M-22 signs, are in the public domain and shall not be protected by patent, trademark, or copyright.

However, last year, the federal court issued an opinion in favor of M22, dismissing the case for lack of jurisdiction. The court held that it lacked jurisdiction over Michigan’s claim for declaratory relief. Furthermore, the court held that Michigan lacked standing as there was no concrete injury alleged. Michigan’s main argument as to concrete injury was that Michigan risks losing federal highway funding if it does not comply with and enforce state and federal laws and regulations, including the MUTCD. The court disagreed, determining Michigan had not alleged facts showing how the registration of M22’s marks would prevent Michigan from complying with the MUTCD, that there was any risk of losing federal funding, or that Michigan has any power to enforce the MUTCD against private third parties.

But Michigan still didn’t give up after losing the federal court ruling. The case was remanded back to state court, where extensive motion practice ensued. The state court ultimately concluded that: (1) Michigan has standing; (2) the MUTCD has the force and effect of Michigan law; (3) M22 LLC is subject to Michigan law; and (4) the M-22 highway sign is a traffic control device under the MUTCD. However, the court declined to determine whether M22’s trademark registrations and use were unlawful under the MUTCD (as Michigan argued), and held the TTAB may lift its stay.

So now the dispute is right back where it started over five years ago, in the trademark cancellation proceeding at the TTAB.  The TTAB lifted its stay last year, and recently granted an extension of discovery to allow M22 to take a deposition of a designee for Michigan. Most recently–just yesterday in fact–Michigan moved again for leave to file a partial summary judgment motion, on Michigan’s claim that M22’s registration should be cancelled for unlawful use in commerce, based on violations of the MUTCD standards. However, the Board had already ruled twice that Michigan was prohibited from filing further motions for summary judgment. Today, M22 filed a request for a telephone conference with the Interlocutory Attorney, stating that briefing on Michigan’s third motion for summary judgment should be unnecessary based on the Board twice prohibiting such a motion.

This has been an interesting saga so far, and it’s fascinating that Michigan has been willing to invest so much time and money vigorously contesting this registration, when it is unclear (as it was to the Michigan federal court) whether there is a significant risk of any concrete injury to Michigan in allowing this mark to remain registered. How do you think this dispute will end up? Stay tuned for updates.

 

Following a nice evening out chatting with Kevin O’Keefe, it’s time for my favorite weekend of all – the NCAA tournament.

Now this post isn’t necessarily about basketball, but rather rivalries. In particular, rivalries between the state of Michigan and the state of North Carolina. Michigan v Duke, Michigan State v. North Carolina…there’s plenty of rivalry there.

Within the last week, Michigan-based brewery Bell’s Brewery, which brews one of my favorite transported ales – the Bell’s Two Hearted Ale, has challenged the name of North Carolina-based brewery Innovation Brewing, which brews about 500 barrels a year.

Anything striking a chord for trademark issues yet?  Any idea why Bell’s might be challenging a company like Innovation Brewing?

Well because, unbeknownst to me likely because I have only ever purchased Bell’s off of a tap menu, apparently Bell’s has an unregistered tagline “bottling innovation since 1985” – a tagline that I couldn’t find use of in a very cursory search of its websites and labels.

Bell’s has faced some considerable consumer scrutiny over this challenge, even being labeled a trademark “bully.”  North Carolina loyalists are pretty upset that Michigan-based Bell’s would challenge this.

What do you think?  Is it madness? Do you have any innovative strategies to combat this issue?

No opinion on this?  Well, who do you have winning it all for the NCAA basketball tournament?

 

 

 

– Draeke Weseman, Weseman Law Office, PLLC

On Monday, the University of Oregon and The Ohio State University will play in college football’s first College Football Playoff championship game. DuetsBlog has previously covered the trademark issues surrounding BCS Properties’ attempt to register College Football Playoff as a trademark in connection with college football playoff games here. Even if College Football Playoff ultimately fails as a trademark, Monday’s championship game will be awash in trademarks and intellectual property. Consider this your DuetsBlog guide to the game.

UNIVERSITY OF OREGON

We’ll start with Oregon, and begin with a little history. In 1859, Congress required Oregon to set aside land for a state university as a condition for admittance into the Union. Oregon chose land in Eugene, and, in the mid-1870s, began building what is today the University of Oregon®, or Oregon®, or just UO®. Although all eyes will be on the Oregon Ducks’® football team on Monday night, Eugene may be better known to many as Track Town USA® thanks to the success of Oregon’s track team under Bill Bowerman in the 1960s and 70s. During that time Bill Bowerman introduced jogging to the American public, coached the legend Steve Prefontaine, met Phil Knight, and started Nike, Inc.

Nike has maintained a strong relationship with Oregon ever since, hiring grad Tinker Hatfield in the 80s to design Air Jordan shoes (but not the ones blogged about here) and grad Dan Weiden’s agency Weiden-Kennedy, to coin the tag line “Just Do It” while developing TV ads like “Bo Knows” to sell newly invented cross-training shoes (also designed by Tinker Hatfield.) Today, Nike designs not only Oregon’s football uniforms, but also the special uniforms for all four teams that played in the College Football Playoffs, branding them from head to toe, and even hands:

For those interested, these uniform deals are influential, lucrative, and signed on a team-by-team basis.

Continue Reading Topics of Conversation for Your College Football Playoff Party

In Michigan last week, the billboard below popped up off of an interstate highway near Flint:

(image, and story, available here)

It certainly isn’t the first time that an advertisement has left out, or at least obscured, the sponsor or the products. (See our own Duets Blog discussion of a Coca Cola ad with sparse information here).

Given that Michigan is the largest producer of blueberries in the United States, there were a few usual suspects: the Michigan Blueberry Growers’ Association, Flint’s largest blueberry farm, local farmer’s markets, the annual blueberry festival… No, no, no, and no. Not us. So who was actually behind it? And what were they trying to say?

Continue Reading I’m Concerned About The Meaning.

Restaurant trade dress is possible to own when the claimed trade dress is distinctive and non-functional, think Taco Cabana. Restaurant trade dress can be so unique in the marketplace that distinctiveness is presumed with a finding of inherent distinctiveness. When not so obviously unique, distinctiveness also can be established with the more difficult proof of secondary meaning.

Remember 1992? The U.S. Supreme Court, in Two Pesos v. Taco Cabana, held that when restaurant trade dress is inherently distinctive there is no need for the more difficult proof of secondary meaning or acquired distinctiveness. Now, fast forward to December 2010. Apparently inspired by Taco Cabana’s short-cut to success, Happy’s Pizza, a more than 100 location pizza restaurant franchise from Farmington Hills, Michigan, asserted ownership of an inherently distinctive unregistered restaurant trade dress in an infringement action against competing Papa’s Pizza:

 

Unfortunately for Happy’s Pizza, after two years of litigation, not only did the district court not find the claimed trade dress to be inherently distinctive on summary judgment, it appears that Happy’s Pizza will never have the opportunity to try and establish distinctiveness through the acquisition of secondary meaning, because U.S. District Judge Marianne O. Battani of the Eastern District of Michigan rejected the claimed trade dress as generic, just two weeks ago in Happy’s Pizza Francise, LLC v. Papa’s Pizza, Inc.

If you’re wondering what elements made up the plaintiff’s claimed trade dress, here you go:

  1. Granite countertops and tabletops;
  2. Ceramic tiled walls and faux-Venetian plaster finished walls;
  3. Extensive neon lighting;
  4. Ceramic floors;
  5. Large back-lit menu with faux-Venetian plaster walls;
  6. Large, black industrial-style rugs;
  7. Back-lit pictures of menu items;
  8. Stainless steel shelving units behind the service counter; and
  9. Stacks of pre-folded pizza boxes and large coin-operated candy and bubble gum dispensers.

With respect to the necessary element of distinctiveness, the court ruled:

“Happy’s used generic elements to create a fast food restaurant setting otherwise indistinguishable from any others. Without the use of Happy’s name and logo within the design or on the menu, there is nothing that would alert the average consumer that they are in a Happy’s restaurant. Thus, Happy’s trade dress is generic and it has failed to provide sufficient evidence to establish this element.”

And with respect to the element of non-functionality, it found:

“Happy’s failed to provide evidence that these elements are not commonly used in the industry. It also failed to show that there are other alternatives for Papa’s to use in conducting its business or provide any evidence that protecting the trade dress would not hinder competition. Considering the elements as a whole, this total package is common to the fast food industry. Happy’s has not provided sufficient evidence to establish this element.”

Not having seen the interior of either pizza place, I’m still wondering whether there might have been a more creative and effective way to dress up the claimed trade dress description, your thoughts?

Irony is something I enjoy capturing, as you already know, especially when it comes to branding. Take this recent image from my favorite hot dog joint in Grand Rapids, Michigan, Yesterdog:

Note the vintage Drink Coca-Cola signage on the wall, directly behind the modern soft drink fountain, delivering only Pepsi products, to my great disappointment. Now, I’m not suggesting this is another example of initial interest trademark confusion at work. Despite Ron Coleman’s protestation to the contrary — that was, but this isn’t. After all, it didn’t bring me into the restaurant, and once in, the impressive variety of vintage signage adorning the walls makes obvious the point that the signage is part and parcel of the look and feel of the place:

What I was surprised to learn from one of the Yesterdog folks is that they’d like to be offering Coke products, but to do so, the Coke representative apparently would require the removal of their non-Coke signs from the walls. Seriously? Why would a brand owner seek to enforce such a requirement, especially when so many of the signs promote the Coca-Cola brand?

Does the Coca-Cola brand really want to be remembered only as a brand from the past — to subliminally reinforce Pepsi’s branding as: The Choice of a New Generation? Now, I didn’t do a sign count, but it took some work to find a vintage Pepsi sign, and even then, it was engulfed with vintage Coca-Cola branding at every turn:

So, could one of our expert branding friends please explain to me how the reported requirement from Coke actually serves to support the Coca-Cola brand, if at all? 

Last, given the title, I trust you’ll agree that this post would not be complete before reminding everyone of all that can go wrong when the words “Pepsi, No Coke” are spoken, at least in the fictitious Olympia Cafe.

Aaron Keller’s keen branding and naming points yesterday — prompted by his recent encounter with a physician by the name of Dr. Cure, are well taken.

Building upon that +5 naming scale theme, with a surname like Trim, especially if it is Will Trim, you might expect a personal trainer at one of the local health clubs, unless of course, that be not his calling:

Then again, Reverend Trim certainly works the upper end of the +5 naming scale, much better than Mr. Trim, especially when it comes to promoting the development of spiritual fitness at the Uptown Assembly of God in Grand Rapids, Michigan.

Vice President Joe Biden recently revived popular use of the word “malarkey” or “malarky” — a word that essentially means “nonsense.”

Our DuetsBlog friend Nancy Friedman, author of the award-winning Fritinancy Blog, covered “Malarkey” as the “Word of the Week” earlier this month.

So, imagine my surprise to pass by a restaurant called Malarkys in Grand Rapids, Michigan this past weekend; I couldn’t resist pulling over to snap a picture.

Then, imagine my surprise to find this minivan parked in front of Malarkys!

I don’t know how long the business has operated under this name, and I don’t know how long the minivan has worn the Romney-Ryan signs or been parked there.

What I do know is that stories can be told to explain, interpret, and distort the fact of this photo. No doubt, some fiction, some non-fiction, and some just plain misleading.

Anyway, it got me thinking about how storytelling is currently a buzzword among branding specialists, and how important storytelling is in our political process too.

This photo is a fact, the photo is not doctored, and I didn’t stage the props in it — I simply captured what I spontaneously witnessed with my trusty iPad.

Yet, I have no doubt that loyalists on both sides of the aisle are fully capable of weaving or spinning a multitude of stories to explain the fact of this photo to their political advantage.

Care to share a story about this photo and start a dialogue?

Hardly a day goes by without the media reporting on some sort of trademark dispute. Enter the need for a winner and a loser, a bully and a victim.

You know the typical media drill by now, Goliath is the trademark owner and a guilty bully, and David, of course, is an innocent victim, lacking any personal responsibility whatsoever.

This week’s David, one of the most recent “victims” of so-called “trademark bullying” is the Sazerac Lounge in Grand Rapids, Michigan, apparently soon to be known as Reservoir.

The problem with the automatic victim label for the little guy is that the owner of any business — even a small business — bears responsibility for the name selected, and in this instance, even a free search on the USPTO database would have revealed The Sazerac Company, Inc., as the only owner of federally-registered trademark or service mark rights in SAZERAC: the mark being registered since 1955 for “alcoholic cocktails” — with a claimed first use date of 1895.

In terms of even minimal due diligence, a free USPTO search of the term also would have revealed the company’s federally-registered rights in SAZERAC for “restaurant services” since 2003, with nationwide constructive use rights dating back to 1999, and a claimed actual first use date of 1926. For goodness sake, even putting aside the multiple federal registrations in existence and a matter of public record long before the opening of the Sazerac Lounge some seven years ago, the dictionary even notes the trademark status of the term.

Maybe someone ought to update the slanted “bullying activities” section of the Wikipedia page for Sazerac Company to get the facts straight.

I’m all for supporting true victims, but more than big and little is required for a proper analysis to determine whether the tempting sympathetic label actually fits.