Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA574213
`ESTTA Tracking number:
`12/03/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`State of Michigan
`Michigan
`Citizenship
`State
`State Operations Division 525 W. Ottawa - Second Floor
`Lansing, MI 48933-1067
`UNITED STATES
`
`Attorney
`information
`
`James L. Scott
`Warner Norcross & Judd LLP
`111 Lyon Street NW 900 Fifth Third Center
`Grand Rapids, MI 49503
`UNITED STATES
`trademarks@wnj.com, GallagherJ3@michigan.gov, BrickeyD@michigan.gov,
`RestucciaE@michigan.gov, JacksonJ5@michigan.gov Phone:6167522000
`Registrations Subject to Cancellation
`
`Registration No
`Registrant
`
`3992159
`Broneah, Inc.
`125 E. Front St
`Traverse City, MI 49684
`MI
`Goods/Services Subject to Cancellation
`
`Registration date
`
`07/12/2011
`
`Class 035. First Use: 2007/11/21 First Use In Commerce: 2007/11/21
`All goods and services in the class are cancelled, namely: Retail store services featuring clothing,
`sporting goods, and novelty items
`
`Grounds for Cancellation
`
`Deceptiveness
`False suggestion of a connection
`Consists 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 thereof
`The mark comprises matter that, as a whole, is
`functional
`Torres v. Cantine Torresella S.r.l.Fraud
`The registration is being used by, or with the
`permission of, the registrant so as to
`misrepresent the source of the goods or services
`on or in connection with which the mark is used.
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(b)
`
`Trademark Act section 2(e)(5)
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`
`

`
`Priority and likelihood of confusion
`The mark is primarily geographically descriptive
`Other
`
`Registration No
`Registrant
`
`3348635
`Broneah, Inc.
`125 E. Front St
`Traverse City, MI 49684
`MI
`Goods/Services Subject to Cancellation
`
`Trademark Act section 2(d)
`Trademark Act section 2(e)(2)
`Registration violates the provisions of the federal
`Manual on Uniform Traffic Control Devices.
`http://mutcd.fhwa.dot.gov/kno_2009.htm See 23
`USC 109(d), 23 USC 402(c); 23 CFR
`655.603(b)(3).
`Registration date
`
`12/04/2007
`
`Class 025. First Use: 2004/01/01 First Use In Commerce: 2004/01/01
`All goods and services in the class are cancelled, namely: Apparel specifically hats, t-shirts, long
`sleeve shirts, sweat shirts, pants, shorts, underwear, tank tops
`
`Grounds for Cancellation
`
`Deceptiveness
`False suggestion of a connection
`Consists 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 thereof
`The mark comprises matter that, as a whole, is
`functional
`Torres v. Cantine Torresella S.r.l.Fraud
`The registration is being used by, or with the
`permission of, the registrant so as to
`misrepresent the source of the goods or services
`on or in connection with which the mark is used.
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(b)
`
`Trademark Act section 2(e)(5)
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Design Mark
`
`Goods/Services
`
`transportation and tourism
`
`Attachments
`
`M22 sign.jpg
`Petition to Cancel M22.pdf(110050 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/JS/
`James L. Scott
`12/03/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petitioner,
`
`
`
`State of Michigan
`
`
`
`
`v.
`
`M22, LLC,
`
`
`
`
`
`Registrant.
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`Reg. Nos.: 3992159
`
`
`3348635
`
`
`
`Cancellation No. _______
`
`CONSOLIDATED PETITION TO CANCEL
`
`
`
`
`
`Petitioner State of Michigan, by and through its attorneys, Attorney General
`
`Bill Schuette, Assistant Attorney General James D. Gallagher, and Special
`
`Assistant Attorney General James L. Scott, brings this action to cancel Registration
`
`Nos. 3.992,159 and 3348635 owned by Registrant M22, LLC.
`
`Petitioner believes that it has been and will continue to be damaged by the
`
`registration of the sign shown in United States Trademark Registrations Nos.
`
`3348635 , registered on December 4, 2007 (the “M22 Online Registration”), and
`
`3992159, registered on July 12, 2011 (the “M-22 Registration”). Accordingly,
`
`Petitioner hereby petitions to cancel the M-22 Registration and the M22 Online
`
`Registration on the following grounds:
`
`1
`
`

`
`1.
`
`The State of Michigan’s highway route marker sign for Michigan
`
`Highway M-22 –
`
` – is identical to the sign
`
` in the M-22 Registration and
`
`the M-22 Online Registration (each the “M-22 Sign”).
`
`2.
`
`Petitioner has used the M-22 Sign continuously in interstate commerce
`
`for nearly a century. Petitioner organized its highway system by number in 1919,
`
`using the design of a white diamond containing a black letter “M” at the top with
`
`the assigned highway number below.1
`
`3.
`
`Petitioner’s M-22 highway, designated by the M-22 Sign, is one of the
`
`most scenic in Michigan. For over 93 years, generations of travelers have
`
`experienced the road and the area immediately surrounding it. The M-22 highway
`
`is an integral part of the Grand Traverse Bay area and Northern Michigan region,
`
`which is home to some of the most popular destinations for recreation, leisure, and
`
`relaxation that Petitioner has to offer.
`
`4.
`
`Petitioner is damaged by Registrant’s registration of the M-22 Sign
`
`and unlawful claims to exclusive rights to use the M-22 Sign.
`
`Petitioner’s M-22 Sign is not subject to trademark protection.
`
`Trademark Manual of Examining Procedure (TMEP) §1205.01
`
`5.
`
`6.
`
`provides:
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`1For additional in-depth historical analysis, see Michigan Highways: The Great Routes of the Great Lakes State
`<http://www.michiganhighways.org> (accessed May 8, 2012).
`
`
`2
`
`

`
`Various federal statutes and regulations prohibit or restrict the
`use of certain words, names, symbols, terms, initials, marks,
`emblems, seals, insignia, badges, decorations, medals, and
`characters adopted by the United States government or
`particular national and international organizations. These
`designations are reserved for the specific purposes prescribed in
`the relevant statute and must be free for use in the prescribed
`manner.
`
`7.
`
`Both federal and state laws establish a uniform system of traffic
`
`control devices. In 1971, the United States Department of Transportation, Federal
`
`Highway Administration issued regulations designed to bring uniformity to the
`
`roadways of the United States pursuant to the Highway Safety Act of 1966. These
`
`regulations are set forth in the federal Manual on Uniform Traffic Control Devices
`
`(“MUTCD”). The MUTCD is the law governing all traffic control devices.
`
`8.
`
`The MUTCD is promulgated by the United States Department of
`
`Transportation and establishes “the national standard for all traffic control devices
`
`installed on any street, highway, or bicycle trail open to public travel,” 23 CFR
`
`655.603(a); 23 CFR Part 655, Subpart F, “in accordance with” 23 USC 109(d) and 23
`
`USC 402(a).2 See 23 CFR 655.603.
`
`9.
`
`The MUTCD regulates the use of traffic control device designs like
`
`Petitioner’s M-22 Sign. The MUTCD provides that the M-22 Sign is in the public
`
`domain and not subject to trademark protection:
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`2 23 USC 109(d) gives the Secretary of Transportation the authority to approve the “location, form
`and character of informational, regulatory and warning signs, curb and pavement or other markings,
`and traffic signals” on any highway project involving the use of federal funds. 23 USC 402(a)
`mandates that each state create “a highway safety program . . . designed to reduce traffic accidents
`and deaths, injuries, and property damage resulting therefrom” and requires that each state
`program be “in accordance with uniform guidelines promulgated by the Secretary.”
`
`
`3
`
`

`
`Any traffic control device design or application provision
`contained in this Manual shall be considered to be in the public
`domain. Traffic control devices contained in this Manual shall
`not be protected by a patent, trademark, or copyright, except for
`the Interstate Shield and any items owned by [the Federal
`Highway Safety Administration]. [Emphasis added.]3
`
`
`
`10. To remain eligible for federal highway and highway safety program
`
`funds, a state must adopt the federal MUTCD as a state regulation, adopt a state
`
`MUTCD that is approved by the Secretary of Transportation as being in
`
`“substantial conformance” with the federal MUTCD, or adopt the federal MUTCD
`
`in conjunction with a state supplement. See 23 USC 109(d), 23 USC 402(c); 23 CFR
`
`655.603(b)(3).
`
`11. Consistent with these federal provisions, the Michigan Vehicle Code,
`
`1949 PA 300, MCL 257.1 et seq., requires the Michigan Department of
`
`Transportation (“MDOT”) and the Michigan State Police to adopt and maintain a
`
`uniform system of traffic control devices,” which includes all signs,4 that conforms
`
`with the federal MUTCD. See MCL 257.608.5
`
`12.
`
`In compliance with the Michigan Vehicle Code, MDOT has adopted
`
`versions of the Michigan MUTCD that are consistent with the federal manual
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`3 This provision has been part of the Michigan MUTCD since 2005, two years before Registrant’s
`alleged first use in commerce of the M-22 route marker sign.
`
` 4
`
` The term “traffic control devices” “means all signs, signals, markings, and devices not inconsistent
`with this act placed or erected by authority of a public body or official having jurisdiction, for the
`purpose of regulating, warning or guiding traffic.” MCL 257.70 (emphasis added).
`
` 5
`
` The federal MUTCD is available at <http://mutcd.fhwa.dot.gov/kno_2009.htm> (accessed
`September 17, 2013).
`
`
`4
`
`

`
`regarding guidelines on how to create and utilize Michigan traffic control devices.6
`
`The federal manual suggests a default design for state highway route markers with
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`a white circle imposed on a black square featuring the respective highway number
`
`in black. But it allows states the option to create a unique design, and Michigan
`
`chose to maintain its historic design – the M-22 Sign – using a white diamond
`
`rather than a circle, and a block “M” over the black number.
`
`13. The M-22 Sign is a traffic control device regulated by the MUTCD.
`
`14. The M-22 Sign is functional in nature and consists of matter that, as a
`
`whole, is functional.
`
`15. Under the MUTCD, the M-22 Sign shall not be protected as a
`
`trademark.
`
`16. Granting exclusive rights to use the M-22 Sign under the Lanham Act,
`
`regardless of associated goods and services, violates the provisions of the MUTCD.
`
`17. When used in association with the goods and services provided by
`
`Registrant, the M-22 Sign only imparts information, conveys an informational
`
`message, or provides ornamentation.
`
`18.
`
` The M-22 Sign fails to function as a mark, is not perceived by
`
`consumers as a mark, is not capable of functioning as a trademark, service mark, or
`
`trade name, is not perceived by consumers as a source indicator, and when used on
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`6 MDOT’s version of the MUTCD is available at <http://mdotcf.state.mi.us/public/tands/plans.cfm>
`(accessed September 17, 2013).
`
`
`5
`
`

`
`or in connection with Registrant’s goods and services, the M-22 Sign is perceived by
`
`consumers as purely ornamental.
`
`19.
`
` Registrant’s use of Petitioner’s M-22 Sign falsely suggests a
`
`connection with Petitioner.
`
`20. The M-22 Sign represents and describes 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 roadside. This did not happen in
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`three or five years. These associations come from Petitioner’s use of the M-22 Sign
`
`and maintenance of the highway for travelers for nearly a century.
`
`21. Like other individuals who have travelled the M-22 highway,
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`Registrant’s owners “fell in love with M-22, literally while travelling along M-22
`
`countless times in pursuit of wind, waves, and perfect beaches for their beloved
`
`sport of kiteboarding. The M-22 image sparked something in the brothers that
`
`reminded them of natural beauty, good times, and positive energy[.]”7
`
`22. Registrant chose to use the M-22 Sign because of the geographic
`
`location it represents and for all that individuals associate with the sign and the
`
`highway.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`7 See Exhibit A to USPTO Trademark Application No. 85041051, a copy of the M-22 Website, About
`Us, available at <http://m22.com/about-us> (accessed September 16, 2013).
`
`6
`
`

`
`23. Registrant chose to use the M-22 Sign because of the sign’s association
`
`with Northern Michigan and the “natural beauty, good times, and positive energy”
`
`there.8
`
`24. Registrant’s predecessor, Broneah, Inc., was formed by its owners to
`
`“express a common passion for Northern Michigan.” [Emphasis added].9
`
`25. Travelers to and within the State of Michigan associate the M-22 Sign
`
`with the State of Michigan.
`
`26. The experience and culture surrounding the highway give the M-22
`
`Sign its significance and create the impression that consumers associate with the
`
`M-22 Sign.
`
`27. Registration of the M-22 Sign is improper under Section 2(a) of the
`
`Lanham Act, 15 USC § 1052(a), as it falsely suggests a connection with the State of
`
`Michigan.
`
`28. Registration of the M-22 Sign is improper under Section 2(b) of the
`
`Lanham Act, 15 USC § 1052(b), as it consists of insignia of the State of Michigan.
`
`29. The M-22 Sign is primarily merely geographically descriptive.
`
`30. The M-22 Sign in the M-22 Registration and in the M-22 Online
`
`Registration is functional.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`8 Id.
`9 Id.
`
`7
`
`

`
`31. The M-22 Sign in the M-22 Registration and in the M-22 Online
`
`Registration is being used by Registrant to misrepresent the source of the goods or
`
`services on or in connection with which the mark is used.
`
`32. The M-22 Registration and the M-22 Online Registration were
`
`obtained fraudulently.
`
`33. Registrant knowingly misrepresented facts regarding the significance
`
`of the M-22 Sign in obtaining the M-22 Registration and the M-22 Online
`
`Registration.
`
`34. The M-22 Registration and the M-22 Online Registration were
`
`obtained contrary to the provisions of 15 U.S.C. § 1052 (a) and (b).
`
`35. Petitioner’s State Highway M-22 is a picturesque and well-traveled
`
`116-mile drive along Lake Michigan through Manistee, Benzie, and Leelanau
`
`Counties. A 64 mile segment of M-22 in Leelanau County has been designated a
`
`Michigan Scenic Heritage Route under 1993 PA 69, MCL 247.951 et seq. The
`
`“heritage route” designation may be applied to “[c]ertain portions of the state
`
`trunkline highway system [that] are so uniquely endowed by natural aesthetic,
`
`ecological, environmental, and cultural amenities immediately adjacent to the
`
`roadside that their use by a larger percentage of the motoring public, particularly
`
`during the recreational season, is for the experience of traveling the road rather
`
`than as a route to a destination.” MCL 247.953.
`
`8
`
`

`
`36.
`
`In the 93 years in which the M-22 Sign has been used by Petitioner,
`
`travelers have come to associate the M-22 Sign with those “natural aesthetic,
`
`ecological, environmental, and cultural amenities immediately adjacent to the
`
`roadside . . .” Likewise, the M-22 Sign has long been, and continues to be,
`
`associated with Petitioner and Northern Michigan.
`
`37. Registrant acknowledges that “M-22 is not just a road; it is a way of
`
`life.”10
`
`38. Registrant has acknowledged that “[M-22] is marked by the simplicity
`
`and appreciation for natural wonders such as bays, beaches, and bonfires, dunes
`
`and vineyards, cottages, friends and family everywhere.”11
`
`39. When used on or in connection with Registrant’s goods, the M-22 Sign
`
`is merely descriptive of them.
`
`40. When used on or in connection with Registrant’s goods, the M-22 Sign
`
`is primarily merely geographically descriptive of them.
`
`41.
`
` The Michigan route marker design is not subject to copyright
`
`protection because it is in the public domain.
`
`42.
`
` Registrant’s registration of the M-22 Sign and claim to exclusive
`
`rights in the M-22 Sign improperly circumvents copyright law.
`
`43. Granting exclusive rights to use the M-22 Sign under the Lanham Act,
`
`regardless of any associated goods and services, circumvents copyright law. See
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`10 Id.
`11 Id.
`
`9
`
`

`
`Dastar Corp v Twentieth Century Fox Film Corp, 539 US 23, 34; 123 S Ct 2041; 156
`
`L Ed 2d 18 (2003). See also Comedy III Productions, Inc v New Line Cinema, 200
`
`F3d 593, 595; 53 USPQ2d 1443 (CA 9, 2000) (“[T]he Lanham Act cannot be used to
`
`circumvent copyright law. If material covered by copyright law has passed into the
`
`public domain, it cannot then be protected by the Lanham Act without rendering
`
`the Copyright Act a nullity”).
`
`44. As stated above, the MUTCD provides that the M-22 Sign is in the
`
`public domain and not subject to trademark nor copyright protection:
`
`Any traffic control device design or application provision
`contained in this Manual shall be considered to be in the public
`domain. Traffic control devices contained in this Manual shall
`not be protected by a patent, trademark, or copyright, except for
`the Interstate Shield and any items owned by [the Federal
`Highway Safety Administration]. [Emphasis added.]12
`
`45. Registrant cannot protect the M-22 Sign under copyright law because
`
`it took no part in creating it. Registrant has commandeered the design and seeks to
`
`usurp copyright law by obtaining trademark protection over a design that is in the
`
`public domain.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`12 This provision has been part of the Michigan MUTCD since 2005, two years before Registrant’s
`alleged first use in commerce of the M-22 Sign.
`
`
`10
`
`

`
`For the reasons stated above, Petitioner respectfully requests that
`
`Registrations Nos. 3,348,635 and 3,992,159 be cancelled.
`
`
`
`
`
`
`By ____________________
`
`BILL SCHUETTE, Attorney General
`James D. Gallagher, Assistant Attorney General
`James L. Scott, Special Assistant Attorney General
`State Operations Division
`525 W. Ottawa
`Second Floor
`Lansing, MI 48933-1067
`Tel: (517) 373-1162
`Fax: (517) 373-2060
`
`
`
`
`Date: December 3, 2013
`
`11
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a true copy of this Petition for Cancellation has
`
`been served on the owner of record, M22, LLC, by mailing a copy on December 3,
`2013, via First Class Mail, postage prepaid to the following correspondence address
`of record:
`
`
`M22, LLC
`125 E. Front Street
`Traverse City, Michigan 49684
`
`
`______________________________
`
`
`
`
`
`
`
`12