Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA734467
`03/18/2016
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92058315
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Plaintiff
`State of Michigan
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`TONI L HARRIS
`TRANSPORTATION DIVISION
`VAN WAGONER BLDG, 425 W OTTAWA 4TH FLOOR
`LANSING, MI 48913
`UNITED STATES
`harrisT19@michigan.gov, lubitzs@michigan.gov
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`Other Motions/Papers
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`Toni L. Harris
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`harrist19@michigan.gov, lubitzs@michigan.gov
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`/s/ Toni L. Harris
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`03/18/2016
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`MDOTs MSJ 2 03-18-16.pdf(257050 bytes )
`Ex 1.pdf(48015 bytes )
`Ex 2.pdf(115184 bytes )
`Ex 3.pdf(164511 bytes )
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`EX 44.pdf 1183594 bytes )
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`Ex 44.pdf(1183594 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`State of Michigan
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`Petitioner,
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`v.
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`M22, LLC
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`Respondent.
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`__________________________________
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`Reg. Nos.:
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`3992159
`3348635
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`Proceeding: 92058315
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`PETITIONER STATE OF MICHIGAN’S
`COMBINED MOTION FOR PARTIAL SUMMARY JUDGMENT
`AND BRIEF IN SUPPORT
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`Petitioner, State of Michigan (State), by and through its attorneys, Bill Schuette,
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`Attorney General, and Toni L. Harris, Assistant Attorney General, hereby moves for partial
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`summary judgment under Fed. R. Civ. P. 56 on its claims that Respondent’s marks at issue
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`in this Proceeding, which are virtually identical to the State’s trunkline highway route
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`marker, are not protectable as trademarks under 15 U.S.C. § 1052 because they are in all
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`material respects identical to governmental insignia and falsely suggest a connection with
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`the State of Michigan. Accordingly, Respondent’s registrations must be canceled.
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`In support of its Motion, the State of Michigan states as follows:
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`INTRODUCTION
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`The State adopted its distinctive state route design nearly a century ago as an
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`insignia of its authority over state trunkline highways. The State’s authority over such
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`highways is established under Michigan law, which, in accordance with federal law, adopts
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`and mandates compliance with the national Manual on Uniform Traffic Control Devices as
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`supplemented by the State with approval by the Federal Highway Administration (FHWA).
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`Since the early 1970s, the State has continuously used the current sign design, i.e., ,
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`which has been incorporated into the MUTCD since it was rewritten by the FHWA in 1971.
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`The State’s sign is a traffic control device in compliance with state and federal law,
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`and the insignia on the device guides travelers and evidences the State’s authority over its
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`trunkline highways, as opposed to interstates, U.S. routes, and county roads. The State’s
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`sign design does not represent a governmental agency, person, monument, building, or
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`statue. Rather, it is an insignia of governmental authority and, as governmental insignia,
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`it is not eligible for trademark registration under the Lanham Act.
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`Nevertheless, Respondent registered trademarks on the State’s diamond state route
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`design, e.g., and , which are virtually identical to the State’s sign and which
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`Respondent uses in the exact same manner that the State uses “M22” in its trunkline road
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`sign design (Serial Nos. 78963038 and 85041051, respectively) (collectively “Marks”).
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`In addition to being an emblem of governmental authority, the State’s sign is
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`famously known throughout Michigan and the country as a unique identifier of popular
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`scenic regions and routes winding throughout the State. The regions and routes, commonly
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`denoted by the State’s sign design, are well-known and well-loved by inhabitants and
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`visitors alike, and are heavily marketed to attract hundreds of thousands of visitors every
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`year and during every season. Residents and tourists have made an inextricable connection
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`between the State’s route marker and their favorite regions of the State, and statements by
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`Respondent and its customers demonstrate that the Marks falsely suggest a connection
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`with the State. As such, the registrations should be canceled.
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`STANDARD OF REVIEW
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`In reviewing a motion for summary judgment under Fed. R. Civ. P. 56(c), the Board
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`applies the same standard as the federal courts. Campbell v. Bassani Mfg., 368 Fed. Appx.
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`133, 134 (Fed. Cir. 2010) (affirming the Board’s entry of summary judgment that the mark
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`2
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`was generic and, therefore, not registrable). In other words, summary judgment is
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`appropriate when, drawing all justifiable inferences in the nonmovant’s favor, the
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`pleadings, depositions, documents, electronically stored information, interrogatories,
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`admissions, affidavits, or other materials in the record, demonstrate that there are no
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`genuine disputes of material fact and the movant is entitled to judgment as a matter of law.
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`See Fed. R. Civ. P. 56; see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
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`FACTS
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`A.
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`State and federal law establish the State’s authority represented in its
`diamond design trunkline route marker.
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`State and federal law require the State to adopt a Manual on Uniform Traffic
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`Control Devices (MUTCD), which has the force and effect of law vis-à-vis (i) incorporation
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`by reference into the Code of Federal Regulations, and (ii) mandatory compliance with the
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`MUTCD, as required under the Michigan Vehicle Code. 23 C.F.R. 655.601(d) , as explained
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`in the State’s Motion for Partial Summary Judgment, filed on August 28, 2015, at pp. 5-9;
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`Michigan Compiled Law (“MCL”) 257.1 et seq.
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`Section 608 of the Michigan Vehicle Code requires the State to adopt the MUTCD
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`and specifications for a uniform system of traffic-control devices consistent with Michigan
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`Law. MCL 257.608. (Ex. 1.) Under MCL 257.70 and the MUTCD as adopted and
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`supplemented by Michigan, a traffic control device means “all signs, signals, markings, and
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`devices placed or erected by authority of a public body or official having jurisdiction for the
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`purpose of regulating, warning or guiding traffic.” MCL § 257.70 (emphasis added). (Ex.
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`2.) The term “traffic control device” includes signs that are advisory in nature, including
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`the State’s highway route markers that guide traffic. See Gorelick v. Dept. of State
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`Highways, 127 Mich. App. 324, 329-330; 339 N.W.2d 635 (1983) (explaining that a “pass
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`3
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`with care” sign, even if “merely advisory in nature,” comes within the definition of a “traffic
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`control device.”). (Ex. 3.)
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`According to the MUTCD adopted and supplemented by the State:
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`Guide signs are essential to direct road users along streets and highways,
`to inform them of intersecting routes, to direct them to cities, towns,
`villages, or other important destinations, to identify nearby rivers and
`streams, parks, forests, and historical sites, and generally to give such
`information as will help them along their way in the most simple, direct
`manner possible.
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`(Ex. 4, p. 137, § 2D.02.)
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`Under MUTCD and Michigan law, the purpose of the State’s distinctive diamond
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`shape and stylized lettering is to maintain instant recognition by travelers of the State’s
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`authority:
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`12 Where U.S. or State Route signs are used as components of guide signs,
`only the distinctive shape of the shield itself and the route numerals within
`should be used. The rectangular background upon which the distinctive
`shape of the shield is mounted, such as the black area around the outside
`of the shields . . . should not be included on the guide sign. Where U.S. or
`State Route signs are used as components of other signs of non-contrasting
`background colors, the rectangular background should be used to [sic] so
`that the recognition of the distinctive shape of the shield can be
`maintained.
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`(Ex. 4, p. 143, bold emphasis added.)
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`Section 609(a) of the Michigan Vehicle Code requires the State to “place or require to
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`be placed and maintain or require to be maintained such traffic-control devices, conforming
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`to [the MUTCD] and specifications, upon all state highways as it shall deem necessary to
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`indicate and to carry out the provisions of this chapter or to regulate, warn or guide traffic.”
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`(Ex. 1, emphasis added.) Accordingly, the MUTCD has the force and effect of law in
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`Michigan. Nawrocki v. Macomb Co. Rd. Comm., 463 Mich. 143, 181, 615 N.W.2d 702
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`(2000). (Ex. 5.) Local authorities may not place or maintain any traffic control device on
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`any trunkline highway under the jurisdiction of the State, except with permission by the
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`State. MCL § 257.609(b). (Ex. 1.) Local authorities and county road commissions must
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`place and maintain traffic control devices on roads under their jurisdiction as they deem
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`necessary and as required by law; however, all such devices must conform to the MUTCD.
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`Id.; MCL § 257.610. (Ex. 1.) For example, where a Michigan municipal corporation posted
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`weight restriction signs along a county road and issued traffic citations for violations of an
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`ordinance pursuant to the signs, the Michigan Court of Appeals held that the municipality’s
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`posting of the signs was unauthorized and, therefore, violated Michigan law. Trenton v.
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`County Bd. Of Rd. Comm’rs of Wayne Co., 116 Mich. App. 212, 218; 323 N.W.2d 340 (1982).
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`(Ex 6.)
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`Moreover, any person who, without lawful authority, attempts to or, in fact, does
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`“alter, deface, injure, knock down, or remove any traffic control device . . . or any
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`inscription, shield, or insignia thereon, or any part thereof,” is in violation of Michigan law.
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`MCL § 257.616. (Ex. 1, emphasis added.) Drivers in Michigan must obey traffic control
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`devices unless otherwise instructed by a police officer. MCL § 257.611 (“The driver of a
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`vehicle or operator of a street car shall not disobey the instructions of a traffic control
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`device placed in accordance with this chapter unless at the time otherwise directed by a
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`police officer.”) (Ex. 1.)
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`These federal and state laws establish the authority accorded to the State and
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`emblemized in its trunkline highway route marker design. Long before Respondent put the
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`route marker design on a t-shirt and other novelty items to espouse a “common passion” for
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`the road and region in Northwest Michigan, the State’s distinctive design was and remains
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`widely known and instantly recognized as uniquely identifying the State, and as an
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`insignia of the State and its authority over trunkline routes throughout Michigan.
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`5
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`B.
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`The State developed and adopted its state trunkline route marker design in
`the early 1900s and has consistently used the diamond design for nearly
`100 years to represent the State’s authority.
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`Since the early 1900s, the State of Michigan’s standard trunkline route marker
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`design has been the shape of a diamond with a block letter “M” in the upper corner and the
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`route number in the lower corner. (Ex. 7.) In 1913, the State’s trunkline highway known
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`as “M-22” was established as the first state trunkline passing through the Michigan
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`counties of Benzie, Leelenau, and Manistee. (Ex. 8, p. 139.) In 1919, Michigan began
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`designating and signing its state trunkline highways using the diamond-shaped design to
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`guide traffic, i.e., . (Ex. 7.)
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`From the early 1970s, when the United States government updated the MUTCD to
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`standardize road signs1, through the present, the State, with FHWA’s approval, has
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`incorporated its diamond-shaped route marker design in the MUTCD by supplement. Over
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`the last four decades, the sign has remained relatively unchanged. (Ex. 7; Ex. 9, 1973
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`MUTCD, as adopted and supplemented by the State.) Without question, Michigan’s
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`trunkline route marker design is unique and easily distinguishable from all other state
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`highway marker designs used in the other 49 states. (Ex. 10.) Further, as explained more
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`fully below, the State has continuously used the unique sign design as an emblem of its
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`authority over state trunkline highways.
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`In the mid-1980s, the State of Michigan Department of Transportation, in
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`conjunction with then-Michigan First Lady Paula Blanchard acting as an advisor to the
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`Michigan Department of Commerce, devised a route that was designated as the Great
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`Lakes Circle Tour, a scenic road system connecting all of the Great Lakes and the St.
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`1 In 1935, the first Manual on Uniform Traffic Control Devices (MUTCD) was published and
`approved as an American Standard. (Ex. 11, p. 3.) In 1971, the FHWA began administering the
`MUTCD and published a rewritten version of the manual. (Ex. 11, p. 3.)
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`Lawrence River. The M-22 trunkline route, and other trunkline routes demarcated by the
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`same route marker design and applicable route number, were included in the Lake
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`Michigan Circle Tour completed in 1986. (Ex. 12.) Great Lakes Circle Tour signs and Lake
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`Michigan Circle Tour signs are displayed and advertised with the M-22 state trunkline
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`route design. (Ex. 12.)
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`In 1993, the Michigan Heritage Route Program, created by Public Act 69 of 1993,
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`was established to identify, inventory, protect, enhance, and promote state trunklines and
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`adjacent land with distinctive or unique scenic, cultural, or historic qualities. (Ex. 13.) A
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`Scenic Heritage Route is one with areas of “outstanding natural beauty whose features
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`include, but are not limited to, significant natural features such as vegetation, land form,
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`water, and open areas with exceptional vistas and views that singly or in combination make
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`that area unique and distinct in character.” (Ex. 13, MCL 247.951(f).)
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`By its terms, the intent of Public Act 69 is to provide the State with authority to
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`maintain and enhance the scenic roadways and surrounding areas:2
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`[E]stablish the state’s responsibility for the enhancement and enjoyment
`of Michigan’s scenic, recreational, and historic resources along its
`roadside by identifying and designating certain portions of the state trunk
`line highway system as a Pure Michigan byway . . . [and] to provide
`criteria for the location and length of Pure Michigan byways and adjacent
`areas requiring continuing and careful coordination of planning, design,
`construction, maintenance, land use, and development, by state and local
`agencies as appropriate, to encourage adjacent land use consistent with
`the intent of the designation.
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`(Ex. 13, MCL 247.952.)
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`Under the Act, a Heritage Route is one to which the old adage “getting there
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`is half the fun” applies:
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`2 In 2014, the designation “Scenic Heritage Route” was rebranded as “Pure Michigan Byway.” In
`accordance with MCL 247.957a, the State is in the process of replacing the Scenic Heritage Route
`signs posted along the M-22 route with a new marker identifying it as a Pure Michigan Byway. (Ex.
`13, MCL 247.957a.)
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`Certain portions of the state trunkline highway system 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. . . . The improvement philosophy for these roads is to
`maintain the essential elements of the road and the area immediately
`surrounding the road that create its unique character.
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`(Ex. 13, MCL 247.953.)
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`In 2001, the State designated approximately 60 miles of the 116-mile M-22 state
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`trunkline route as the M-22 Scenic Heritage Route. (Ex. 14.) In 2015, the M-22 route,
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`denoted by the State’s route sign design, was named by USA Today as the “#1 Best Scenic
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`Autumn Drive in the Nation” based on a month-long poll of USA Today readers. (Ex. 15.)
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`C.
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`Statements by Respondent and its customers confirm that the State’s sign
`is inextricably linked to the State and that the Marks refer to Northwest
`Michigan.
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`On August 29, 2006, despite the State’s consistent use of the its sign design over the
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`last 100 years, Respondent applied to register a federal trademark on the State’s diamond
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`state route design - - with “M22online.com” below the sign in “tiny” print, as
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`described by the Trademark Examiner (Serial No. 78963038). See May 2, 2007 Office
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`Action. The mark was registered on December 4, 2007 without any reference to or
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`consideration by Respondent of the indisputable fact that it is virtually identical to the
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`State’s known mark, which had been continuously used by the State as an emblem of its
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`authority for 90 years prior and remained in use at time (Registration No. 3348635).
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`In May 2010, Respondent filed a second application for registration of a mark - -
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`that the Trademark Examining Attorney determined was used in “exactly the way the
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`Michigan Department of Transportation uses ‘M22’ in its road signs for this highway”
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`(Serial No. 85041051). Respondent did not dispute the Examiner’s finding, but rather made
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`a new claim of acquired distinctiveness. The mark was registered on July 12, 2011, again
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`without reference to or consideration of the fact that it is identical to the State’s known
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`mark, which had been continuously used by the State as an emblem of its authority for
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`nearly 95 years prior and remained in use at time (Registration No. 3992159).
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`By its own admission, Respondent began selling novelty items advertising the
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`State’s route sign design to communicate a “common passion” for Michigan and, in
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`particular, the popular tourist region recognized and known throughout Michigan and the
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`U.S. by reference to the State’s route sign, i.e., . (Ex. 16.) According to Respondent, its
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`founders “fell in love with M-22, literally while traveling along M-22 countless times” and
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`“M-22 was created to express a common passion for Northern Michigan.” (Ex. 16.)
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`Moreover, comments and support by Respondent and its customers, as shared on
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`Respondent’s Facebook page attached at Exhibits 17-22, confirm this shared understanding
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`and recognition that the State’s sign design is inextricably linked to the State, and that the
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`Marks are a direct reference to Northwest Michigan:
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`Exhibit 17 – Strictly Business Article (2011):
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`For the brothers, M-22 is a way to express appreciation for the region
`through comfortable fashion.
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`“It is easy for people to relate to the road because of its cool location and most
`People already have an attachment to it – M-22 is a special place for people,
`good memories.”
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`“The highway is the nicest, most beautiful stretch of road along any fresh
`water in the world.”
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`Exhibit 18 - M22 Facebook Page (2011)
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`“Founded by kiteboarders in search of epic wind and waves, M-22 was
`created to express a common passion for Northern Michigan.”
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`Exhibit 19 - Comment on photo of M22 on military helmet patch
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`Post by Nate Farran – “Great way to represent Michigan in many ways.
`M22. Thanks for your service.”
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`Exhibit 20 – Facebook post by Lisa Lowery – “Hi Michigan! I just crossed the
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`Alps and wore my M22 jersey! Missing Michigan.” (M22000469)
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`Exhibit 21 – Facebook post by Lauren Graves Kropf – “Repressing m22 at the Rock
`and Roll Half Marathon New Orleans. And yes I had someone stop me and
`tell me they had a house in Leeland.”
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`Exhibit 22 - Comments on M22 Facebook page and wall photos of northern Michigan
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`(a) Post by Don Bandemer - “How cool ! I just wish he and all the rest of our
`men were back home to enjoy M22 and the holidays.” (M22000493)
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`(b) Post by Vanessa Rogers-Bisard – “Where I grew up……from Onekama to
`Sleeping Dunes….” (M22000494)
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`(c) Post by Jayme Sue – “Crazy to walk down the street of Flagstaff AZ to see
`someone wearing a M22 shirt and got it as a gift from his parents. Made
`my day brighter to see a piece of home:)” (M22000498)
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`(d) Post by M22 (Respondent) - “Can you help us write a caption for this
`Jason Hamelin photo shot off of M22?” (M22000499, see photo of area in
`Michigan)
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`(e) Post by M22 (Respondent) – “Video from our friends Leelanau
`Conservancy showing why M22 is just as good in the winter.”
`(M22000499-500, see photo of area in Michigan; see also Response Post by
`Steven O’Connor – I will be back up north in 4 days…..i can’t wait!!!)
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`(f) Post by Keenan Ke – “I saw an M22 sticker today in Belleview, Fl. It was
`the highlight of my day and I cannot wait to be back there in July!”
`(M22000500)
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`(g) Post by Sue Gizinski Katona – “A Fall Color Tour on M22” (M22000501,
`see photo of area in Michigan; see also (M22000503-504))
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`(h) Post by Danielle Russell – “Pierport near Arcadia” (M22000502, see photo
`of area in Michigan; see also (M22000503, Sleeping Bear Dunes))
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`(i) Post by M22 (Respondent) – “Does it get any better, anywhere? M22
`SBP” (M22000503, see photo of area in Michigan)
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`(j) Post by Crystal River Outfitters announcing a new store – “This store will
`offer all the best of M22 merchandise and allow us to further promote
`Crystal River Outfitters mission of recreating outdoors in Northern
`Michigan.” (M22000504)
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`(k) Post by Cindy Engdahl – “M22 – most beautiful views any where!”
`(M22000505)
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`(l) Post by Christie Luedders Overgaard – “There’s no place like home.”
`(M22000505-506, see photo of area in Michigan)
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`(m) Post by Megan P Kelly – “Oh how I miss the sites from M22! One of my
`favorite drives in the whole world!” (M22000506)
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`(n) Post by Carol Wilkerson Steward – “Luv it. Can’t wait to come up.”
`(M22000506)
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`(o) Post by Julie Heile Youmans – “Snows finally came to our Missouri
`hideout. Love M-22 snow memories.” (M22000507)
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`(p) Post by Dave Westerfield – “A painting of one of my favorite places. Now
`available as a print.” (M22000507, see post of painting of M22 sign along
`Michigan road) (M22000507)
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`(q) Post by Jenny L. Powell – “I see more M22 stickers in Cincinnati than
`when I lived Up North [northern Michigan]! Love it and miss M-22…
`looking forward to M-22 this spring/summer/fall!” (M22000507)
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`(r) Post by Zach Hansel – “It’s Official!!!!!! 45th parallel pride gone world
`wide!!!!!!” ((M22000507, see photo of area in Michigan at 45th Parallel)
`
`(s) Post by Jarrodd Case – “just came back from a ski trip to homestead and
`stayed in Northport… fell in love with M22 and the beautiful area!!”
`(M22000508)
`
`(t) Post by M22 (Respondent) – “M22 Images” (M22000509; see photos of the
`M22 sign and areas in Michigan)
`
`(u) Post by Mary Meilinger DeWitt – “We are a company on M-22! At the
`Narrows” (M22000510, see photo of an area in Michigan)
`
`(v) Post by Monica Rose Schneider – “if you look close, My dad is wearing an
`M22 hat, he loves you guys too” (M22000510)
`
`(w) Post by M22 (Respondent) – “A flier from the opening of M22 on
`September 9, 1949.” (M22000511, see photo of flier relating to M22
`highway)
`
`(x) Post by Mimi Ransick – “Kayaking on Big Glen” (M22000512, see photo of
`area in Michigan)
`
`
`
`11
`
`

`
`
`
`
`
`(y) Post by M22 (Respondent) – “What do you look forward to doing on M22
`in 2011?” (M22000512, see photo of area in Michigan)
`
`(z) Post by M22 (Respondent) – “Where is your favorite place for an M22
`sunset?” (M22000513, see photo of area in Michigan)
`
`(aa) Post by Kelly DePuy Bolin – “It’s a great trip down memory lane. Glen
`Arbor to Frankfort. Beautiful!!!!” (M22000513)
`
`
`(bb) Post by Hope Monroe – “M22 Yes, it’s the way home…. friends, family,
`etc.” (M22000513); followed by Response Post by Janine Winkler – “Are
`you driving it soon?” (M22000513))
`
`
`(cc) Post by Matt Roush – “First time I was on M22 was between [Traverse
`City] and Suttons Bay in the summer of 1980 on my way to camp at
`Northport Stat Park. Only other place with water that color and a
`shoreline that pretty is US1 in the Florida Keys. . . .” (M22000514)
`
`
`(dd) Post by Kathy Brigham-Baird – Beautiful Drive into Suttons Bay and
`Leland. Kathy. (M22000515)
`
`
`(ee) Post by Betsy Baye – “I love to ride my Harley up and down M-22
`during the spring, summer and fall seasons. The beauty and joy fills my
`heart and soul, every time!” (M22000516)
`
`
`(ff) Post by CaptainArt Walker Art Talker – “I really dig M-21, the
`Bluewater Highway. It’s like your brother road.” (M22000516)
`
`
`(gg) Post by Rita Wiseheart – “I love M22 so beautiful was there this
`summer, if you have never been you should go~~~” (M22000516)
`
`
`
`
`I.
`
`
`
`ARGUMENT
`
`The State of Michigan’s distinctive state route highway marker is an
`emblem of authority, and has been an insignia of the State dating back to
`the early 1900s. Accordingly, Section 2(b) bars registration of the Marks.
`
`Section 2(b) of the Lanham Act precludes trademark registration of “other insignia
`
`of the United States, or of any State or municipality, or of any foreign nation, or any
`
`simulation thereof.” 15 U.S.C. § 1052(b). Unlike registration under Section 2(a), elements
`
`such as disparagement or false suggestion of a connection are not required to preclude
`
`
`
`12
`
`

`
`registration under Section 2(b). TMEP § 1204. Moreover, because Section 2(b) operates as
`
`an absolute bar to registration, a disclaimer of the prohibited flag or insignia, or
`
`registration under Section 2(f) or the Supplemental Register, cannot overcome the
`
`prohibition on registration. TMEP § 1204.04(a). Furthermore, the absolute bar applies to
`
`all applicants, including the governmental entity that owns the insignia. In re City of
`
`Houston, 731 F.3d 1326, 1330; 108 U.S.P.Q.2d 1226 (Fed. Cir. 2013).
`
`The test for determining whether a mark constitutes “other insignia” was set forth
`
`in In re U.S. Dept. of the Interior, 1964 WL 8039; 142 U.S.P.Q. 506 (T.T.A.B. 1964), where,
`
`under the “ejusdem generis” rule of construction applied to the language in Section 2(b),
`
`“other insignia” refers to emblems of authority in the same general class as “the flag or coat
`
`of arms.” Id. at *2. “These types of insignia are pictorial in nature, they can be described,
`
`but cannot be pronounced.” U.S. Navy v. U.S. Mfg. Co., 1987 WL 123804, *3; 2 U.S.P.Q.2d
`
`1254, 1256 (T.T.A.B. 1987) (finding that the initials of the United States Marine Corp,
`
`“USMC,” was not an insignia because the “letters identify people and things associated with
`
`a particular agency within a department of the executive branch of the government, rather
`
`than function as an insignia of national significance representing the authority of the
`
`government or nation as a whole.” (Note that, in 1984, Public Law 98 525 was enacted,
`
`which deemed the initials, seal and emblem of the U.S. Marine Corps to be insignia of the
`
`United States under 10 U.S.C. § 7881.))
`
`Examples of insignia refused registration by the USPTO because they represent
`
`emblems of national authority include the Great Seal of the United States, the Presidential
`
`Seal, and seals of government agencies which represent the authority of the government.
`
`TMEP 1204.02(a). Conversely, registrations for flags and other insignia that have not been
`
`refused under Section 2(b) include words, initials, or designs that identify people or
`
`governmental departments, or monuments, statues and buildings associated with the
`
`
`
`13
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`

`
`United States. See In re U.S. Dep’t of the Interior, 1964 WL 8039; 142 U.S.P.Q. 506
`
`(T.T.A.B. 1964) (insignia of the National Park Service is registrable); Liberty Mut. Ins. Co.
`
`v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908, 127 U.S.P.Q. 312, 323 (E.D. Ark. 1960)
`
`(“That the Statue of Liberty is not a part of the insignia of the United States’ is too clear to
`
`require discussion.”); and U.S. Navy v. U.S. Mfg. Co , supra.
`
`A.
`
`Like the State’s flag and coat of arms, the State’s route marker
`design is unique to Michigan and signifies the State’s authority.
`
`
`Under TMEP 1204.02(a), “flags and coats of arms are specific designs formally
`
`adopted to serve as emblems of governmental authority.” As explained supra, the State of
`
`Michigan’s state highway route marker design has been emblematic of governmental
`
`authority for nearly 100 years. Michigan’s sign design is unique and easily distinguishable
`
`from all other state highway marker designs used in the other 49 states. (Ex. 10.) It does
`
`not identify governmental agencies, persons, monuments, statues or buildings. Rather, the
`
`design represents the State’s authority over trunkline highways under its jurisdiction, as
`
`opposed to interstates, U.S. routes, and county routes. As explained above, the State’s
`
`authority is established under Michigan statutes that mandate compliance with the
`
`MUTCD and preclude altering the insignia on traffic devices. MCL 257.616. (Ex. 1.)
`
`Accordingly, the State’s diamond design constitutes an insignia on par with the
`
`State’s flag or coat of arms and, therefore, is not eligible for registration as a trademark
`
`under the Lanham Act. See In re U.S. Dept. of the Interior, supra (overruling the
`
`examiner’s refusal to register the emblem of the National Park Service because the insignia
`
`is used to identify a service or facility of the government). Unlike the National Park Service
`
`insignia, the State’s route marker design does not represent an agency, department, or
`
`service, but rather denotes the State’s authority. Because the Marks at issue are virtually
`
`
`
`14
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`

`
`identical to the State’s route marker design, or a simulation at a bare minimum, the
`
`registrations must be canceled.
`
`B.
`
`The Marks registered by Respondent are virtually identical to the
`State’s route marker design.
`
`
`
`Any attempt by Respondent to distinguish the Marks from the State’s sign design in
`
`an effort to maintain the registrations is futile. Its own actions confirm that the Marks, i.e.,
`
`and , are identical to the State’s sign, e.g., , in every material respect. In fact,
`
`Respondent failed to dispute the Examiner’s finding that the Marks are used in “exactly”
`
`the way the State uses the road signs for its highway, i.e. as an indication of authority to
`
`regulate, warn, and guide travelers. (Serial No. 85041051.) On its Facebook page,
`
`Respondent admits that the “M22 road sign” is protected as a trademark. (Ex. 25.)
`
`Respondent purports to have made “creative” modifications to the State’s sign.
`
`However, by its own admission, Respondent’s “creativity” is limited to a white border,
`
`imperceptibly thicker letters within and rounder corners on the diamond, and the addition
`
`of “M22ONLINE.COM” below the State’s sign. However, the allegedly “creative” white
`
`border around the sign in the Marks is the same as the border that appears on signs
`
`erected along Michigan’s roads. See Ex. 23, p. 2 and Ex. 26. Moreover, a white border
`
`added to the sign to set it apart from the dark color of a t-shirt is not even remotely
`
`creative. Clearly, Respondent’s creativity is as indiscernible as the thickness changes and
`
`rounded co