throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA581553
`ESTTA Tracking number:
`01/13/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92058315
`Plaintiff
`State of Michigan
`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
`Opposition/Response to Motion
`James L. Scott
`trademarks@wnj.com
`/JS/
`01/13/2014
`Response to Motion to Dismiss.pdf(136941 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`"
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petitioner’s Opposition to
`Registrant’s Partial Motion to
`Dismiss
`
`Petitioner’s Submission of
`Amended Petition for Cancellation
`Pursuant to Rule 15
`
`Reg. Nos.:
`
`
`
`
`
`
`3992159
`3348635
`
`Proceeding:
`
`92058315
`
`
`
`
`
`
`
`
`State of Michigan
`
`
`
`Petitioner,
`
`
`
`
`v.
`
`M22, LLC,
`
`
`
`Registrant
`
`
`
`
`
`
`
`Petitioner State of Michigan opposes Registrant M22, LLC’s partial motion to
`
`dismiss its Petition to Cancel in part. The State of Michigan has standing, and its
`
`Petition to Cancel properly states a claim for cancelling Registrant’s registered
`
`marks. Registrant’s motion should therefore be denied.
`
`Standard
`
`A motion to dismiss for failure to state a claim upon which relief can be
`
`granted is a test solely of the legal sufficiency of the complaint. To withstand a
`
`motion to dismiss for failure to state a claim in a Board proceeding, a petitioner
`
`need only allege such facts as would, if proved, establish that (1) it has standing,
`
`and (2) a valid ground exists for canceling registrant’s registrations. The pleading
`
`must be examined in its entirety, construing the allegations therein liberally, as
`
`required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations
`
`which, if proved, would entitle Petitioner to the relief sought. See Lipton Industries,
`
`Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Kelly
`
`Services Inc. v. Greene’s Temporaries Inc., 25 USPQ2d 1460 (TTAB 1992); and
`
`"
`
`

`
`"
`
`TBMP 503.02 (2d ed. rev. 2004). For purposes of determining the motion, all of the
`
`State of Michigan’s well-pleaded allegations must be accepted as true, and the
`
`pleading must be construed in the light most favorable to the State. See Advanced
`
`Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26
`
`USPQ2d 1038 (Fed. Cir. 1993); Stanspec Co. v. American Chain & Cable Company,
`
`Inc., 531 F.2d 563, 189 USPQ 420 (CCPA 1976). Additionally, under the simplified
`
`notice pleading rules of the Federal Rules of Civil Procedure, the allegations of a
`
`complaint should be “construed so as to do justice.” Fed. R. Civ. P. 8(e); Scotch
`
`Whisky Ass’n v. United States Distilled Products Co., 952 F.2d 1317, 1319, 21
`
`USPQ2d 1145, 1147 (Fed. Cir. 1991).
`
`Registrant’s motion confuses the ability of a party to establish or prove
`
`certain facts, with the obligation to allege those facts which, if taken as true, will
`
`establish the basis for cancellation.
`
`Standing
`
`When determining the sufficiency of a petitioner’s pleading of standing, the
`
`Board must decide whether the petition for cancellation alleges sufficient facts to
`
`show petitioner has a real interest in the outcome of the proceeding. See Ritchie v.
`
`Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); and Jewelers
`
`Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023
`
`(Fed. Cir. 1987) (in pleading stage of proceeding plaintiff must plead facts sufficient
`
`to show a real interest in proceedings).
`
`By the Petition to Cancel, the State of Michigan has alleged its use of the M-
`
`22 Sign in interstate commerce in association with its roads and associated services
`
`"
`
`

`
`"
`
`for over 93 years. In that time, the State has developed valuable good will in the M-
`
`22 Sign, which symbolizes and represents a significant portion of its tourism
`
`industry. As alleged, 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 in Michigan. The M-22 Sign
`
`embodies and signifies the source of these popular tourist destinations that
`
`Michigan maintains and has to offer. Further, the State has used the M-22 Sign in
`
`its “Pure Michigan” video advertisement campaign, which is broadcast throughout
`
`the United States.1 Through the State’s commercial use, and through the M-22
`
`Sign’s regulation as a traffic control device, the State has a proprietary interest in
`
`the M-22 Sign and a very real personal interest in whether a third party may claim
`
`the exclusive right to use that sign as a mark. The continued registration of the M-
`
`22 Sign to Registrants, and the associated presumption of exclusive right to use,
`
`damages the State of Michigan and presents a means for restricting the State’s use
`
`of the M-22 Sign. Private citizens should not be able to enjoin the State from using
`
`its own traffic control device in any fashion.
`
`The State of Michigan also has standing based on the Attorney General’s
`
`authority under the parens patriae doctrine as recognized by the Michigan Supreme
`
`Court. In the Michigan Supreme Court case of In Re Certified Question, 638
`
`N.W.2d 409, 413 (Mich. 2002), the Court found that the Michigan Attorney
`
`General's "most basic purpose" is to litigate "matters on behalf of the people of the
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`1 See Fall Color on M-22 Michigan's Most Scenic Highway Ad Campaign by Pure Michigan, available
`at http://www.youtube.com/watch?v=QreJo5P6-VY.
`
`"
`
`

`
`"
`
`state" under Mich. Comp. Law § 14.28. Here, the State of Michigan, which
`
`independently developed and created the M-22 sign, purposefully placed it into the
`
`public domain, and specifically prohibited the M-22 sign from being “protected by a
`
`patent, trademark, or copyright.” See Manual on Uniform Traffic Control Devices
`
`2009, pg. I-1. The continued registration of the M-22 Sign to Registrants, and the
`
`associated presumption of exclusive right to use, damages the State of Michigan by
`
`preventing other Michigan businesses from utilizing the M-22 Sign to promote their
`
`own goods and services, and to promote the region that the M-22 Sign embodies. In
`
`fact, Registrant has aggressively sought to enforce the mark against other small
`
`Michigan businesses that have utilized similar marks on retail items. The Attorney
`
`General has an obligation to protect the rights of Michigan’s citizens, and to enforce
`
`its laws, which is the reason that under Michigan law he is notified whenever – as
`
`here – the validity of one of the State’s rules or regulations has been called into
`
`question. See Mich. Ct. Rule 2.209(D) (“When the validity of a Michigan statute or
`
`a rule or regulation included in the Michigan Administrative Code is in question in
`
`an action to which the state or an officer or agency of the state is not a party, the
`
`court may require that notice be given to the Attorney General, specifying the
`
`pertinent statute, rule, or regulation.”). By claiming exclusive use of the M-22 Sign,
`
`registrant is in direct conflict with Michigan law, which is adversely affecting the
`
`State of Michigan, as well as the rights of the people of the State.
`
`Cases brought under Trademark Action Section 2(a) or 2(e) do not require
`
`ownership of a trademark registration. A property interest is not an element for
`
`standing to cancel a registration under Sections 2(a) and 2(e) of the Trademark Act.
`
`"
`
`

`
`"
`
`See Corporacion Habanos, S.A. & Empresa Cubana del Tabaco, d.b.a. Cubatabaco
`
`v. Juan E. Rodriguez, Cancellation No. 92052146 (T.T.A.B. Aug. 1, 2011)
`
`(precedential). But even considering this, the State of Michigan’s prior use of the
`
`M-22 Sign at least establishes a proprietary interest in the M-22 Sign such that
`
`Registrant’s continued registration of the M-22 Sign damages the State. Further,
`
`Registrant’s continued registration of the M-22 Sign damages the rights of the
`
`people of the State of Michigan, for which the Attorney General has an obligation to
`
`defend.
`
`Valid Grounds for Cancellation
`
`
`
`The State of Michigan’s Petition to Cancel alleges facts that, if proved, would
`
`establish valid grounds for canceling registrant’s registrations. Nevertheless, to
`
`address the concerns raised by Registrant, the State of Michigan hereby submits its
`
`First Amended Petition to Cancel. The State of Michigan respectfully requests that
`
`the Board accept the Amended Petition for Cancellation in attached Exhibit A.
`
`
`
`
`
`
`
`Date: January 13, 2014
`
`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
`
`
`
`
`
`"
`
`

`
`CERTIFICATE OF SERVICE
`
` certify that Petitioner’s Opposition to Registrant’s Partial Motion to Dismiss is being served
`
`"
`
`
`
` I
`
`upon John Di Giacomo, counsel for Registrant, via email at john@newburglaw.com, as the
`
`parties have agreed, on January 13, 2014.
`
`______________________________
`
`
`
`
`
`
`
`
`
`"
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`"
`
`
`
`"
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petitioner,
`
`
`
`State of Michigan
`
`
`
`
`v.
`
`M22, LLC,
`
`
`
`
`
`Registrant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Reg. Nos.: 3992159
`
`
`3348635
`
`
`
`Proceeding: 92058315
`
`FIRST AMENDED 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, in association with providing traffic management services,
`
`providing road and traffic information, and facilitating the safe and efficient travel
`
`of travelers within its borders.
`
`3.
`
`Petitioner’s use of the M-22 Sign pre-dates the application dates of the
`
`M22 Online Registration and M-22 Registration and pre-dates the first use dates of
`
`the M-22 Sign by Registrant and its predecessor-in-interest.
`
`4.
`
`Through Petitioner’s use of the M-22 Sign, the public has come to
`
`recognize the sign as signifying Petitioner, its services, and specific geographic
`
`areas within Michigan.
`
`5.
`
`Through Petitioner’s use of the M-22 Sign, Petitioner has built up
`
`extensive and valuable goodwill in the M-22 Sign.
`
`6.
`
`The M-22 Sign in the M22 Online Registration and M-22 Registration
`
`is identical to the M-22 Sign used by Petitioner.
`
`7.
`
`The M-22 Sign in the M22 Online Registration and M-22 Registration
`
`is confusingly similar to the M-22 Sign used by Petitioner, and Registrant’s use and
`
`registration of the M-22 Sign is likely to cause confusion, deception, and mistake as
`
`to the origin of Registrant’s products and to confuse, mislead and deceive members
`
`2
`
`

`
`of the public into believing that Registrant’s goods originate from, or are sponsored,
`
`approved or licensed by Petitioner, or are in some way connected to Petitioner.
`
`8.
`
`Registration of the M-22 Sign conveys at a prima facie exclusive right
`
`to use the M-22 Sign. Such registration is a source of damage and injury to
`
`Petitioner.
`
`9.
`
`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
`
`10. Trademark Manual of Examining Procedure (TMEP) §1205.01
`
`provides:
`
`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.
`11. 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.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`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).
`
`
`3
`
`

`
`12. 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.
`
`13. The MUTCD under the Highway Safety Act of 1966 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:
`
`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
`
`
`
`14. 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).
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`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.”
`
`
`
`4
`
`

`
`15. Consistent with these federal provisions under the Highway Safety Act
`
`of 1966, 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
`
`16.
`
`In compliance with the Michigan Vehicle Code, MDOT has adopted
`
`versions of the Michigan MUTCD that are consistent with the federal manual
`
`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
`
`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.
`
`17. The M-22 Sign is a traffic control device regulated by the MUTCD
`
`under the Highway Safety Act of 1966.
`
`18. Under the MUTCD, the M-22 Sign shall not be protected as a
`
`trademark.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`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).
`
` 6
`
` MDOT’s version of the MUTCD is available at <http://mdotcf.state.mi.us/public/tands/plans.cfm>
`(accessed September 17, 2013).
`
`
`5
`
`

`
`19. The MUTCD under the Highway Safety Act of 1966 reserves the M-22
`
`Sign for the specific purpose of functioning as a traffic control device.
`
`20. Granting exclusive rights to use the M-22 Sign under the Lanham Act,
`
`regardless of associated goods and services, violates the provisions of the federal
`
`Highway Safety Act of 1966 regulations under the MUTCD.
`
`21. Petitioner’s M-22 highway, which is designated by the M-22 Sign, is
`
`one of the most scenic in Michigan. For over 93 years, generations of travelers have
`
`benefited from the services provided by Petitioner through the M-22 Sign and have
`
`enjoyed all of the services and attractions to which the M-22 highway provides
`
`access.
`
`22. Travelers have for many years associated the M-22 Sign with
`
`Petitioner, its traffic and road services, and the road and the area immediately
`
`surrounding the M-22 highway. 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.
`
`23. Through Petitioner’s use of the M-22 Sign, the 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 roadside. These associations come from Petitioner’s use of the M-22
`
`Sign and maintenance of the highway for travelers for nearly a century.
`
`6
`
`

`
`24. Like other individuals who have travelled the M-22 highway,
`
`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
`
`25. Through Petitioner’s use of the M-22 Sign, the M-22 Sign has become a
`
`symbol of that region of Petitioner serviced by the M-22 highway.
`
`26. Registrant acknowledges that “M-22 is not just a road; it is a way of
`
`life.”8
`
`27. 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.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`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).
`8 Id.
`
`7
`
`

`
`28.
`
`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,
`
`unmistakably associated with Petitioner and Northern Michigan.
`
`29. 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.”9
`
`30. The M-22 Sign’s function is to tell travelers where on Petitioner’s
`
`highway system they are located.
`
`31. The M-22 Sign facilitates the safe and efficient flow of traffic within
`
`that portion of Northern Michigan where highway M-22 is located.
`
`32. When used on or in association with the goods and services provided by
`
`Registrant, the M-22 Sign is seen by consumers as a symbol of the region serviced
`
`by the M-22 highway and the amenities that region offers.
`
`33. When used on or in association with the goods and services provided by
`
`Registrant, the M-22 Sign is seen by consumers as a symbol that imparts
`
`information, conveys an informational message, or provides ornamentation.
`
`34. When used on or in association with the goods and services provided by
`
`Registrant, the M-22 Sign is not seen by consumers as a source identifier.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`9 Id.
`
`8
`
`

`
`35. When consumers see the M-22 Sign, they associate it with Petitioner’s
`
`state highway sign and its location within Northern Michigan.
`
`36. Consumers who view the M-22 Sign on or in association with goods
`
`and services provided by Registrant do not see the M-22 Sign as a source indicator,
`
`but instead as ornamentation consisting of Petitioner’s state highway sign.
`
`37. When used on or in association with the goods and services provided by
`
`Registrant, the M-22 Sign is functional in nature and consists of matter that, as a
`
`whole, is functional, as it not seen by consumers as a source identifier.
`
`38. 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
`
`or in connection with Registrant’s goods and services, the M-22 Sign is perceived by
`
`consumers as purely ornamental.
`
`39.
`
`Individuals across Michigan adorn their cars with the M-22 Sign
`
`because of its significance as indicating Petitioner and the Northern Michigan
`
`region.
`
`40. Registrant’s use of Petitioner’s M-22 Sign falsely suggests a connection
`
`with Petitioner under Trademark Act section 2(a).
`
`41. Registrant adopted the M-22 Sign because of its geographic association
`
`with Petitioner and the northern part of the state.
`
`9
`
`

`
`42. The M-22 Sign is recognized as Petitioner’s highway route marker
`
`sign, is associated with the region generally and the amenities it offers, and points
`
`uniquely and unmistakably to the State of Michigan.
`
`43. Petitioner is not connected with the activities performed by Registrant
`
`under the M-22 Sign.
`
`44. The fame or reputation of Petitioner is such that, when the M-22 Sign
`
`is used with Registrant’s goods or services, a connection with Petitioner is
`
`presumed.
`
`45. Registrant chose to use the M-22 Sign because of the geographic
`
`location it represents and for all that individuals associate with the sign,
`
`Petitioner’s highway, and Petitioner.
`
`46. Registrant chose to use the M-22 Sign because of the sign’s association
`
`with the northern part of the State of Michigan and the “natural beauty, good
`
`times, and positive energy” there.10
`
`47. Registrant’s predecessor, Broneah, Inc., was formed by its owners to
`
`“express a common passion for Northern Michigan.” [Emphasis added].11
`
`48. The experience and culture surrounding Petitioner’s highway give the
`
`M-22 Sign its significance and create the impression that consumers associate with
`
`the M-22 Sign.
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`10 Id.
`11 Id.
`
`10
`
`

`
`49. Travelers to and within the State of Michigan associate the M-22 Sign
`
`with the State of Michigan.
`
`50. Travelers to and within the State of Michigan associate the M-22 Sign
`
`with Northern Michigan.
`
`51. Registrant promotes and uses the registered M-22 Sign as an
`
`embodiment of all that Petitioner offers to travelers within the northern part of its
`
`boundaries and the area serviced by the M-22 highway.
`
`52. Registrant has copied all aspects of Petitioner’s M-22 Sign and has
`
`deliberately used the M-22 Sign on goods, namely souvenirs, to associate Petitioner
`
`with the source of the goods and services, when Petitioner is not the source of the
`
`goods and services provided by Petitioner. Registrant blatantly misused the M-22
`
`Sign in a manner that was calculated and designed to trade on the goodwill created
`
`by Petitioner in the M-22 Sign. Registrant’s use in this manner misrepresents the
`
`source of Registrant’s goods and services.
`
`53. The M-22 Sign in the M-22 Registration and in the M-22 Online
`
`Registration is being blatantly misused by Registrant to misrepresent the source of
`
`the goods or services on or in connection with which the mark is used, as prohibited
`
`under Trademark Act section 14.
`
`54. 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.
`
`11
`
`

`
`55. The M-22 Sign is an insignia of the State of Michigan.
`
`56. 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.
`
`57. The primary significance of the M-22 Sign is the generally known
`
`region of Northern Michigan, the location of Petitioner’s M-22 highway.
`
`58. On information and belief, Registrant’s goods and services originate in
`
`the Northern Michigan, the place identified in the M-22 Sign.
`
`59. Purchasers are likely to believe that the Registrant’s goods and
`
`services originate in Northern Michigan, the location of Petitioner’s M-22 highway.
`
`60. The M-22 Sign is primarily merely geographically descriptive.
`
`61. When used on or in connection with Registrant’s goods, the M-22 Sign
`
`is merely descriptive of them.
`
`62. The M-22 Sign has not acquired secondary meaning.
`
`63. When used on or in connection with Registrant’s goods, the M-22 Sign
`
`is primarily merely geographically descriptive of them.
`
`64. Registrant obtained the M22 Online Registration and the M-22
`
`Registration fraudulently, in violation of Section 14(3) of the Lanham Act, because,
`
`on information and belief, at the time Registrant applied to register the M-22 Sign,
`
`Registrant knowingly falsely declared, with the intent to deceive the USPTO, that
`
`to the best of Registrant’s knowledge and belief no other person, firm, corporation or
`
`association had the right to use the mark in commerce, either in identical form or in
`
`12
`
`

`
`such near resemblance thereto as to be likely, when used on or in connection with
`
`the goods/services of such other person, to cause confusion, or to cause mistake, or
`
`to deceive. Registrant’s declaration was knowingly false, because Registrant knew
`
`of Petitioner's prior rights in the M-22 Sign, knew of Petitioner’s prior and extensive
`
`use of the M-22 Sign, and knew the extent to which the M-22 Sign pointed to the
`
`State of Michigan.
`
`65.
`
` The Michigan route marker design is not subject to copyright
`
`protection because it is in the public domain.
`
`66.
`
` Registrant’s registration of the M-22 Sign and claim to exclusive
`
`rights in the M-22 Sign improperly circumvents copyright law.
`
`67. Granting exclusive rights to use the M-22 Sign under the Lanham Act,
`
`regardless of any associated goods and services, circumvents copyright law. See
`
`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”).
`
`68. 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
`
`13
`
`

`
`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
`
`69. 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.
`
`For the reasons stated above, Petitioner respectfully requests that
`
`Registrations Nos. 3,348,635 and 3,992,159 be cancelled.
`
`Date: January 13, 2014
`
`
`
`
`
`
`
`
`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
`
`
`"""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""
`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.
`
`
`14
`
`

`
`CERTIFICATE OF SERVICE
`
` certify that Petitioner’s First Amended Consolidated Petition to Cancel is being served upon
`
`
`
` I
`
`John Di Giacomo, counsel for Registrant, via email at john@newburglaw.com, as the parties
`
`have agreed, on January 13, 2014.
`
`______________________________
`
`
`
`
`
`
`
`15

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