©2023. Published in Landslide, Vol. 15, No. 4, June/July 2023, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
M-22 is a Michigan state trunkline highway that originates in the resort community of Traverse City, Michigan, and travels the Lake Michigan coastline, including west to Grand Traverse Bay and the Sleeping Bear Dunes National Lakeshore, until its termination three miles north of Manistee, Michigan. This area of Michigan has long served as a coastal retreat for Chicago and Detroit residents and was named “Most Beautiful Place in America” by ABC
In 2003, two local kiteboarding brothers who had spent years constantly driving along M-22 to find the best kiteboarding spots in the Midwest started to sell apparel with a modified version of the M-22 road sign (M22 mark). They had previously made shirts with the M22 mark for themselves and friends, but after one of the brothers appeared on the cover of a popular local magazine wearing one of their shirts, interest piqued and the M22 brand was established. The business exploded, and eventually M22 applied for and received federal trademark registrations for its name and logo for a variety of retail offerings sold under the brand
In 2013, the Michigan attorneyfiled a petition to cancel M22’s mark with the Trademark Trial and Appeal Board Over the course of five-plus years, the parties litigated the case at the TTAB, in Michigan state and in federal court. Numerous threshold legal issues including standing, abandonment, laches, and acquiescence were briefed and argued. At the TTAB specifically, the parties fought over a host of legal issues—some matters of first impression—related to the State’s cancellation claims. After thousands of pages of legal motions and briefs were filed, and after both state and federal dismissed the State’s claims, the State decided to drop the cancellation proceeding, following the 2018 gubernatorial and attorney general
It was a resounding victory for two brothers who cared more about riding waves than making them. For the rest of us, though, the case left us wanting—wanting answers, specifically, for many of the noteworthy legal arguments put in front of the TTAB.
The Legal Claims
In its effort to cancel M22’s mark, the State brought several grounds for cancellation. Because the parties ultimately agreed to dismiss the cancellation proceeding with prejudice, the board did not get a chance to rule on all the issues. Of the issues presented in the case, three of the issues were most prevalent: (1) unlawful use in commerce, (2) state insignia, and (3) false connection with the
Unlawful Use in Commerce
The most complicated and convoluted argument advanced by the State was that M22’s use of its mark violated federal law, specifically regulatory rules promulgated under the Highway Safety Act of 1966 (HSA). If the use of a mark upon which an application for registration is based is not a lawful use in commerce, including a violation of a federal statute, registration must be refused under sections 1 and 45 of the Lanham
The HSA, of course, has nothing to do with trademarks. Instead, it is a law that, by its express terms, seeks to “accelerate the construction of Federal-aid highwayIn furtherance of that goal, the HSA requires that any highways built using federal funds adopt road signs consistent with the terms of the Manual on Uniform Traffic Control Devices (Manual) and subject to the approval of the secretary of transportation, “who is directed to concur only in such installations as will promote the safety, inclusion, and mobility of all users and efficient utilization of the
In one of its less-notable and non-safety-related provisions, the Manual directs that all traffic control devices within the Manual are in the “public domain” and that “[t]raffic control devices contained in [the] Manual shall not be protected by a patent, trademark, or copyright, except for the Interstate Shield and any items owned by [the Federal HighwayAccording to the State, the Manual’s terms regarding trademarks and public domain as related to traffic control devices rendered M22’s source-signifying use of its M22 mark unlawful. The State also alleged, incredulously, that it would lose federal funding for its highways if M22’s trademark was not
M22 disagreed. First, it argued that the State’s interpretation of the legality and scope of the Manual would cause the Manual (an administrative rule) to preempt the Lanham Act (congressional legislation). The Lanham Act is the only federal statute that can provide trademark rights, and it states that “[n]o trademark . . . shall be refused registration” except as specified in 15 U.S.C. § 1052. It’s not often you see six pages of a TTAB brief dedicated to the improper usurpation of congressional
Second, the Manual was clearly directed at states and local governments, not the general public. States and local governments build roads and erect road signs, not the general public. Therefore, states and local governments must abide by the terms of the Manual, including that they cannot seek trademark rights in their road signs. And this makes sense: if one state or locality secured a trademark in a road sign as a road sign, it would conceivably have the power to prevent other states and localities from using similar signs as road signs. A private citizen or company, however, who uses a variation of a road sign to build a popular apparel brand would not be able to prevent any state or locality from using that mark as a road
Finally, M22 argued that the legal test for “unlawful use in commerce” only applies in cases where (1) goods or services themselves are unlawful, and (2) a federal statute explicitly prohibits registration of the subject matter contained within the application forIt is far-fetched indeed to say that the Manual’s terms “explicitly” prohibit registration of the subject matter contained within the application for registration. For one, the Manual is not a federal statute. And two, the underlying policy advanced by statute under which the Manual was promulgated has nothing to do with trademark rights or even commerce. As stated by M22 at the TTAB: “Simply put, the Highway Safety Act, and its implementing regulations, is a federal law intended to condition the disbursement of federal highway funds on the adoption of a federal safety manual to aid in the reduction of deaths on United States highways, not to regulate the creation of trademark
Unfortunately, the TTAB never ruled on this issue, and we are left to wonder whether it would have bought the State’s arguments.
The State also argued that the M22 mark—and, more specifically, the M22 logo mark—was a state insignia and thus did not qualify for trademark protection under the LanhamSection 2(b) of the Lanham Act provides, in pertinent part:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . [c]onsists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation
As stated by the TTAB in its order denying summary judgment:
In determining what matter falls within the prohibitions of the “other insignia” provision, the Board has drawn a distinction between insignia of national authority such as the Great Seal of the United States, the Presidential Seal, and seals of national government departments on one hand, and “insignia which are merely used to identify a service or facility of the Government (which) are not insignia of national authority and . . . therefore do not fall within the general prohibitions of” the “or other insignia of the United States” provision of Section
The State argued that the M22 logo—which does bear a close resemblance to the M-22 road sign—was “other insignia” because, through the authority of the Manual, the sign was a traffic control device signifying governmental authority over the M-22M22 thought otherwise. It argued that the M-22 road sign is not a symbol or emblem of authority because it merely identifies a service or facility of the State of Michigan, i.e., a road. M22 noted that the definition of “facility” includes “something that makes an action, operation, or activity easier,” and “something (such as a building or large piece of equipment) that is built for a specific purpose,” both of which could encompass a
Ultimately, the TTAB never ruled on the merits of the issue, simply finding that M22 raised a genuine issue of material fact and denying the State’s motion for summary judgment on the
False Connection with the State
The State also argued that by using the M22 mark on its branded merchandise, M22 suggested a false connection with the State ofSection 2(a) of the Lanham Act provides, in pertinent part:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . [c]onsists of or comprises . . . matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs, or national
To prove its false connection claim, the State had to prove that:
- the M22 mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
- the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
- the person or institution identified in the mark is not connected with the goods or services sold by the respondent under the mark; and
- the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when the respondent’s mark is used on its goods or
The State argued that “[t]he M-22 Sign is associated with a particular region within [the State of Michigan’s] borders and the amenities that the region and [the State] offers. The M-22 Sign points uniquely and unmistakably to the State ofThe State further argued that the M-22 sign was used by the State to market and develop tourism in Northwest
In response, M22 argued that the State of Michigan did not ever use the M-22 road sign as its “name or identity” and thus could not satisfy the very first element of its claim. M22 also argued that the M-22 sign stood for something other than “the State of Michigan”—it stood for (and still stands for) the culture of Northern Michigan. Indeed, M22 pointed to the State’s own pleadings, which said: “the [M-22] sign has come to represent and describe the culture of Northern Michigan. That culture is one of recreation and relaxation, vacations, cabins, lakes, Michigan wine, cherry orchards, sand dunes, water sports, skiing, hiking, and similar amenities immediately adjacent to the
Like it did with the state insignia issue, the TTAB failed to rule on the merits of the State’s false connection claim and instead found a fact issue and denied the State’s motion for summary
Ultimately, M22 retains its trademark registrations in its brand. Though one can sympathize with the State’s unease that a single company owns the exclusive rights to use a trademark similar to one of its road signs, ultimately M22 has never—and says they will never—institute any sort of action against the State for its use of the M-22 sign. Indeed, M22 wouldn’t have a claim. Trademark rights are tied to use inM22 sells apparel and other merchandise; it doesn’t sell road signs.
And that was the crux of this case from the beginning, one the State refused to understand. M22 didn’t seek to prevent the State from using the M-22 road sign; it didn’t want to injure the State or the Northwest Michigan region in any way. The M22 brand is a celebration of Northwest Michigan and its most beautiful paved artery. Consumers love the region, and they love the brand. M22 fought hard to protect its rights to keep that brand alive, and to continue the celebration of the State of Michigan and all its natural beauty.