Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA838823
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`Filing date:
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`08/10/2017
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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 email
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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
`Email: 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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`08/10/2017
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`M22 Notice of Outcome.pdf(64318 bytes )
`Exhibit A.pdf(348625 bytes )
`Exhibit B.pdf(22566 bytes )
`Exhibit C.pdf(81342 bytes )
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`

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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.: 3992159
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`3348635
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`Proceeding: 92058315
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`NOTICE OF OUTCOME OF
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`PENDING CIVIL ACTION
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`Petitioner, State of Michigan, by and through its undersigned counsel, and
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`pursuant to the Board’s Order dated September 27, 2016, hereby submits this
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`Notice of Outcome of Pending Civil Action, together with copies of orders entered by
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`the presiding federal and state courts. For its Notice, the State states as follows:
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`On August 23, 2016, the State filed a Complaint for Declaratory Judgment in
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`the State of Michigan, 30th Circuit Court for the County of Ingham, located in
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`Lansing, Michigan, Case No. 16-648-CZ assigned to the Honorable Clinton Canady
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`III, Circuit Court Judge. On August 31, 2016, Respondent removed the case to the
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`United States District Court for the Western District of Michigan, Case No. 16-1084
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`assigned to the Honorable Gordon J. Quist, Federal District Judge. On September
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`14, 2016, the State filed with the federal district court a Motion to Decline
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`Supplemental Jurisdiction.
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`

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`On April 21, 2017, the federal court issued an Opinion finding the court
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`lacked jurisdiction over the State’s claim for declaratory relief. (Ex. A.) The federal
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`court also issued an Order of Remand, remanding the matter to Ingham County
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`Circuit Court. (Ex. B.)
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`In the circuit court action, Respondent filed a Motion for Summary
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`Disposition, and the State filed a Motion for Summary Disposition on May 23, 2017.
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`On August 9, 2017, the circuit court entered an Order denying Respondent’s Motion
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`and granting in part and denying in part the State’s Motion. (Ex. C). More
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`particularly, the circuit court held as follows:
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`i. The state and federal Manuals of Uniform Traffic Control Devices have
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`the force and effect of law in the State of Michigan;
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`ii. Defendant M22, LLC is a Michigan limited liability subject to the laws
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`of Michigan;
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`iii. The M22 state route sign is a traffic control device;
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`iv. This order ends this litigation and the Trademark Trial and Appeal
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`Board may lift its stay. For the reasons stated on the record, the Court
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`declines to determine whether Defendant M22, LLC’s federal
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`trademark registrations issued by the United States Patent and
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`Trademark Office constitute unlawful use.
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`(Ex. C.)
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`Date: August 10, 2017
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`Respectfully submitted,
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`By: /s/Toni L. Harris
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`BILL SCHUETTE, Attorney General
`Toni L. Harris, Assistant Attorney General
`Van Wagoner Building
`425 W. Ottawa, 4th Floor
`Lansing, MI 48913
`Tel: 517-373-1470
`Fax: 517-335-6586
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`I, Susan Lubitz, legal secretary to Assistant Attorney General Toni L. Harris,
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`PROOF OF SERVICE
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`certify that on August 10, 2017, I served a true and correct copy of State’s Notice
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`of Outcome of Pending Civil Action on Respondent’s counsel of record by electronic
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`mail.
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`/s/ Susan Lubitz___________
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`

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`EXHIBIT A TO
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`Notice of Outcome of Pending Civil Action
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`

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`Case 1:16—cv—01084-GJQ—RSK ECF No. 17 filed 04/21/17 PagelD.221l Page 1 of 10
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`UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`STATE OF MICHIGAN,
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`Plaintiff,
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`v.
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`M22 LLC,
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`Defendant.
`/
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`Case No. 1:16—CV-1084
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`HON. GORDON J. QUIST
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`OPINION FINDING LACK OF JURISDICTION
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`Plaintiff, State of Michigan, filed a complaint in the Ingharn County Circuit Court seeking
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`declaratory relief in connection with a pending proceeding that the State filed against Defendant,
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`M22, LLC (M22), before the United States Patent and Trademark Office’s Trademark Trial and
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`Appeal Board (TTAB). In the TTAB proceeding,ithe State sought cancellation of certain registered
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`trademarks owned by M22 that depict the State’s M—22 trunkline marker.
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`In its state—court
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`complaint, the State sought a declaratory judgment that the Manual on Uniform Traffic Control
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`Devices (MUTCD) applies to M22 and its use and registration of the State’s M—22 trunkline route
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`marker as a trademark, and that the use of the M—22 trunkline route marker as a trademark is
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`unlawful under both state and federal law. (ECF No. 1—1 at PageID. l 5, 28.) M22 removed the case
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`to this Court pursuant to 28 U.S.C. § 1441(a), on the ground that the assumed coercive action that
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`M22 would bring against the State would be a claim under the Lanham Act. M22 thus alleged that
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`this Court has jurisdiction pursuant to 28 U.S.C. § 1338(a). (ECF No. l at PagelD.2, 7,)
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`Following removal, the Court issued an Order directing the parties to address the Court’s
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`jurisdictional concerns. (ECF No. 12.) The parties have filed briefs as directed. Having reviewed
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`Case lilG—CV—OlOS4-GJQ—RSK ECF NO. 17 filed 04/21l17 PagelD.2212 Page 2 of 10
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`the briefs, the Court concludes that it lacks declaratory judgment jurisdiction under both Article III
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`and the Declaratory Judgment Act because an actual controversy does not exist.1 Accordingly,
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`because the Court lacks jurisdiction to entertain the State’s declaratory judgment action, the Court
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`will remand this matter to the state court.
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`I. BACKGROUND
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`Pursuant to the Michigan Vehicle Code and federal law, the State has adopted the MUTCD
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`as a uniform system of traffic—control devices.
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`(ECF no. 1-1 at PageID.i3-l4.) The MUTCD
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`embodies regulations adopted by the Federal Highway Administration and is the national standard
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`for all
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`traffic—control devices, e.g.. road signs, traffic signals, etc., installed on pubic streets,
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`highways, and private roads open to public travel.
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`(Id. at PageID.2e3.) To qualify for federal
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`funding on road projects, recipient states must adopt the MUTCD, or a state manual in substantial
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`conformance with the MUTCD, and supplement the MUTCD or state manual as required by law and
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`with approval by the Federal Highway Administration. (Id. at PageID.20.) The State first included
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`its M-22 trunkline highway sign, with its distinctive white diamond design, in its 1971 version of
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`the MUTCD.
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`M22 is a limited liability company located in Traverse City, Michigan. M22 produces and
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`sells clothing and other retail merchandise that feature a depiction of the M—22 trunkline marker.
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`M22 also uses the M—22 trunkiine marker to advertise events that originate near highway M—22. (1d.
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`at PageiD.277.) M22 owns several registered trademarks that incorporate the State’s M-22 marker,
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`including Reg. No. 3348635, for use in association with apparel, and Reg. No. 3992159, for use in
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`association with retail store services (collectively “the Marks”). (ECF Nos. 5-2, 5—3.)
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`1The Court framed the issue in its Order as one of standing. The actuai controversy requirement under the
`Declaratory Judgment Act is coextensive with Articic 111’s constitutional limits, and includes Article Ill’s standing and
`ripeness doctrines. See Fieger v. Mich. Supreme Court, 553 F.3d 955, 96} (6th Cir. 2009); Teva Pharms. USA, Inc. v.
`Novarris Phamrs. Corp, 482 F.3d 5330, 1338 (Fed. Cir. 2007).
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`2
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`

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`Case 1:16—CV—01084—GJQ-RSK ECF NO. 17 filed 04/21/17 PagelD.2213 Page 3 0f 10
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`In May 2012, the State’s Attorney General determined that no entity can lawfully claim
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`exclusive control over use of the State’s trunkline route marker design. (ECF No. 1—1 at PageID.26.)
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`Thereafter, the State sent a letter to M22 seeking M22's cooperation in canceling the Marks, but
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`M22 refused. (1d,) M22 has threatened to sue other users of the State’s trunkline markers with M—
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`22, M-25, M—26, M—28, M—37, and M-1 19 in the diamond design for trademark infringement, but
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`it apparently has never threatened to sue the State for
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`trademark infringement.
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`(Id. at
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`PagelD.26e27.)
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`In December 2013, the State filed a proceeding before the TTAB seeking cancellation of the
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`Marks. The State alleged that M22's use of the Marks was in violation of the law, based on the
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`following provision from the MUTCD:
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`Traffic control devices shall be defined as all signs, signals, markings, and other
`devices used to regulate, warn, or guide traffic, placed on, over, or adjacent to a
`street, highway, pedestrian facility, or bikeway by authority of any public agency
`having jurisdiction.
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`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 other items owned by the [Federal Highway
`Administration].
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`(1d. at PagelD.18~—l9.) In August 2015, the TTAB issued an order denying the State’s motion for
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`summary judgment on its unlawful use in commerce claim, stating:
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`At a minimum, genuine disputes of material fact remain as to the legal effect, if any,
`of the Manual on Uniform Traffic Control Devices (MUTCD), as supplemented,
`whether the provisions of the MUTCD apply to [M22], whether there has been a
`violation of the supplemented MUTCD, and, if so, whether such violation can be
`considered unlawful so as to warrant the cancellation of [MZ2'sl registrations.
`(Id. at PageID.27, 34.) Thereafter, the State filed its instant complaint in state court, seeking a
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`judicial declaration that M22's use and registration of the Marks is unlawful.
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`

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`Case 1:16-cv-01084—GJQ—RSK ECF No. 17 filed 04/21/17 PagelD.2214 Page 4 of 10
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`11. DISCUSSION
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`“[F]ederal courts are courts of limited jurisdiction and have a continuing obligation to
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`examine their subj eet matter jurisdiction throughout the pendency of every matter before them.”
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`In re Wolverine Radio C0,, 930 F.2d 1132, 1137 (6th Cir. 1991); see also Ruhrgas AG v. Marathon
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`Oil Co, 526 U.S. 574, 583, 119 S. Ct. 1563, 1570 (1999) (“[S]ubject~matter [jurisdiction]
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`delineations must be policed by the courts on their own initiative”). Accordingly, this Court may
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`only adjudicate claims “that (l) are within the judicial power of the United States, as defined in the
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`Constitution, and (2) that have been entrusted to them by a jurisdictional grant by Congress.” Chase
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`Bank USA, NA. v. City of Cleveland, 695 F.3d 548, 553 (6th Cir. 2012) (internal quotation marks
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`omitted).
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`The Declaratory Judgment Act provides, in part, “In a case of actual controversy within its
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`jurisdiction .
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`.
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`. any court of the United States, upon the filing of an appropriate pleading, may
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`declare the rights and other legal relations of any interested party seeking such declaration, whether
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`or not further relief is or could be sought.” 28 U.S.C. § 2201(a). The “actual controversy”
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`requirement under the Declaratory Judgment Act is coextensive with Article 111’s case or
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`controversy requirement. Teva Pharm. USA, Inc. v. Novartis Pharm. Corp, 482 F.3d 1330, 1338
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`(Fed. Cir. 2007) (citing Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 239—41, 57 S. Ct. 461, 463—64
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`(1937)).
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`The existence of a case or controversy is highly dependent upon the particular facts
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`at issue. The difference between an actual controversy and an abstract question in a given case “‘is
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`necessarily one of degree,’” and must be ascertained by examining the totality of the circumstances
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`to determine whether there is a “‘substantial controversy between parties having adverse legal
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`interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”
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`Golden v. Zwickler, 394 U.S. 103, 108, 89 S. Ct. 956, 959—60 (1969) (quoting Md. Gas. Co. v. Pac.
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`

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`i32
`31.
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`Case 1:16—cv—01084—GJQ~RSK ECF No. 17 filed 04/21/17 PagelD.2215 Page 5 of 10
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`Coal & Oil Co, 312 U.S. 270, 273, 61 S. Ct. 510, 512 (1941)). hiMedImmune, Inc. v. Genentech,
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`Inc, 549 US. 118, 127 S. Ct. 764 (2007), the Supreme Court reiterated that the proper inquiry “is
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`whether the facts alleged, under all the circumstances, show that there is a substantial controversy,
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`between parties having adverse legal interests, of sufficient immediacy and reality to warrant the
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`issuance of a declaratory judgment.” Id. at 127, £27 S. Ct. at 771 (quoting Md. Gas. Co). The
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`Court rejected the Federal Circuit’s prior, more strict, “reasonable apprehension of imminent suit”
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`test for declaratory judgment standing as inconsistent with the Court’s prior decisions. Id. at 132
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`n.1 l, 127 S. Ct. at 774 n.1 1. The reasonable apprehension test required “both (i) an explicit threat
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`or other action by the patentee, which creates a reasonable apprehension on the part of the
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`declaratory plaintiff that it will face an infringement suit and (2) present activity which could
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`constitute infringement or concrete steps taken with the intent to conduct such activity.” Novartis,
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`482 F.3d at 1339. Post—Medbmmme, a reasonable apprehension of suit can still serve as a basis for
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`a valid Article 111 controversy, but it is only “one of multiple ways that a declaratory judgment
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`plaintiff can satisfy the more general all-the—circurnstances test to establish that an action presents
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`a justiciable Article III controversy.” Prasco, LLC v. Medicis Pharm. Corp, 537 F.3d 1329, 1336
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`(Fed. Cir. 2008).
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`An inquiry into the basis for federal jurisdiction in this case reveals, quite prominently, the
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`absence of a justiciable Article III controversy. Because the State seeks a declaratoryjudgment, the
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`Court must “look[} through the declaratoryjudgment” to determine “[t]he controversy in this case.”
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`Mare! v. LKS Acquisitions, Inc, 585 F.3d 279, 280 (6th Cir. 2009); see also Benitec Australia, Ltd.
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`v. Nucleonics, Inc. , 495 F.3d 1340, 1344 (Fed. Cir. 2007) (“A useful question to ask in determining
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`whether an actual controversy exists is what, if any, cause of action the declaratory judgment
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`defendant may have against the declaratoryjudgmentplaintifflj”). The coercive action in this case,
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`

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`Case 1:16-CV-01084-GJQ-RSK ECF N0. 17 filed 04/211'17 PageID.2216 Page 6 of 10
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`as M22 indicates in its notice of removal, would be a claim for trademark infringement under the
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`Lanham Act.
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`A coercive action is only theoretical at this point. The State does not allege in its complaint,
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`nor has it presented any evidence in its response to this Court‘s December 20, 2017, Order, that M22
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`has ever threatened to sue the State for trademark infringement. Nor does the State allege that M22
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`has mentioned, or done anything to indicate, that itbelieves the State is engaging in any conduct that
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`might infringe the Marks. See Alticor, Inc. v. Nulrisystem, Ina, l:l2~CV—256, 2012 WL 4794596,
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`at *2 (W.D. Mich. Oct. 9, 2012) (concluding that a letter from the defendants’ attorneys to the
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`plaintiff stating that the plaintiff’s use and registration of a mark infringed the defendants” rights in
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`its mark in violation of the Lanham Act gave rise to a substantial controversy between the parties);
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`EclioSrar Satellite LLC v. Finisar Corp, 515 F. Supp. 2d 447, 451w52 (D. Del. 2007) (finding an
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`actual controversyunder Medlmmune because the defendant was successful in a patent infringement
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`suit against a third party on the same patent at issue and the defendant issued a press release stating
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`its intention to continue licensing discussions with other companies). Without an indication from
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`M22 that the State is infringing, “the controversy exists in the mind of only one side, which makes
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`it speculative (as opposed to real) and one—sided (as opposed to between the parties)” Edmunds
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`Holding Co. v. Autobytel 1210., 598 F. Supp. 2d 606, 610 (D. Del. 2009); see also Trippe Mfg. Co.
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`v. Am. Power Conversion Corp, 46 F.3d 624, 627 (7th Cir. 1995) (“The focus of the inquiry must
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`rest on the defendant’s statements and conduct since an apprehension alone, if not inspired by
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`defendant’s actions, does not give rise to an actual controversy.” (internal quotation marks omitted)).
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`Moreover, the State does not allege that it is currently engaging in, or intends to engage in, any
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`conduct—such as selling t—shirts bearing the M-22 marker—that might expose it to a suit for
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`trademark infringement. At bottom,
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`the State is left
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`to argue that
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`the pending TTAB
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`

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`Case 1:16—cv—01084—GJQ—RSK ECF No. 17 filed 04/21/17 PagelD.2217 Page 7 of 10
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`proceeding—that it initiated against M22wgives rise to an actual controversy under Article H1.
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`However, the existence of such a proceeding, without more, does not show the existence of a live
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`controversy. See SnrefootLC v. Sure Foot Corp, 531 F.3d 1236, 1246 (l0th Cir. 2008) (noting that
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`“because a party may oppose a trademark registration for reasons having nothing to do with any
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`infringement dispute between the trademark applicant and the opponent, courts should not take a
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`TTAB opposition filing, automatically and by itself, to be conclusive evidence of the existence of
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`a live dispute”); see also Vina Casa Tamaya SA. v. Oalcvllle Hills Cellar, Inn, 784 F. Supp. 2d 391,
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`396e97 (S.D.N.Y. 2011) (finding the “defendant’s opposition to plaintiff's trademark registration
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`through a cease—and-desist letter and Notice of Opposition before the TTABwaccompanied by
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`settlement negotiations touching on use of the disputed mark .
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`.
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`. insufficient to create an actual
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`controversy based on infringement”).
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`In short, the totality of the circumstances does not demonstrate the existence of the requisite
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`actual controversy to invoke this Court’s jurisdiction.
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`The State’s response shows that it also lacks standing under Article 111. To establish Article
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`III standing, a plaintiff must show injury—in-fact, a causal relationship between the injury and the
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`defendant’s challenged acts, and the likelihood that a favorable decision will redress the injury.
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`Lzrjan v. Defenders oleldlzfe, 504 US. 555, 560—61, 112 S. Ct. 2130, 2136 (1992). Aninjurywin—
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`fact must be “concrete and particularized and actual or imminent.” Id. at 560, 112 S. Ct. at 2136.
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`A plaintiff who seeks declaratory relief can meet the standing requirements by showing “actual
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`present harm or a significant possibility of future harm .
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`.
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`. .” Peoples Rights Org, Inc. v. City of
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`Columbus, 152 F.3d 522, 527 (6th Cir. 1998). Citing Cunningham v. Laser GoHCorp., 222 F.3d
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`943 (Fed. Cir. 2000), the State argues that it need only show a belief that it is likely to be damaged
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`by M22's registration. Cunningham involved an appeal of a TTAB cancellation final decision; the
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`

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`Case 1:16—cv—01084—GJQ—RSK ECF N0. 17ti1ed 04/21/17 PagelD.22l8 Page 8 0t 10
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`instant case does not. Thus, Cunningham does not speak to standing in this case. Moreover, as the
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`Federal Circuit has recently observed, “although the immediacy and redressability requirements for
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`Article Ill standing can be relaxed when Congress accords a procedural right to a litigant—cg, the
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`right to appeal an administrative decision—the ‘requirement of injury in fact is a hard floor of
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`Article III jurisdiction that cannot be removed by statute.” PPG Indus, Inc. v. Valspar Sourcing,
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`Inc. , _ F. App’x A, 2017 WL 5261 16 (Feb. 9, 2017) (quoting Consumer Watchdog v. Wis. Alumni
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`Res. Found, 753 F.3d 1258, 1263 (Fed. Cir. 2014)).
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`The State argues that it has shown harm from the Marks because (1) it risks losing federal
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`highway funding, (2) it will suffer irreparable harm ifit is prevented from enforcing state and federal
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`law precluding a trademark in its highway markers, and (3) the Marks threaten its ability to continue
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`using its signs without the threat of lawsuits by M22. None of these arguments has merit.
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`As for the risk of losing federal highway funding, the State says that “[t]o qualify for and
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`remain eligible for federal highway funding, the State must comply with applicable federal statutes
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`and regulations.” (ECF No. 13 at PagelD.2006 (italics added).) The State then argues that M22's
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`registrations violate state and federal law and harm the State.
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`(161.) But the State does not say how
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`M22's registration of the Marks means that the State itself is not complying with the MUTCD or
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`federal law in a manner that will subject it to losing federal highway funding. That is, the State cites
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`no statute, regulation, or case that requires it to police and prevent trademark registrations of the
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`State’s highway markers by third parties in Michigan or, for that matter, anywhere in the United
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`States, on risk of losing highway funding. Moreover, this argument is speculative at best; the State
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`does not allege or offer any evidence that the Federal Highway Administration or any other federal
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`agency has, in fact, threatened to withhold highway funding from the State because M22 has
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`registered the Marks. Thus, the State has not shown “actual present harm or a significant possibility
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`Case lIlG—CV-01084-GJQ—RSK ECF N0. 17 filed 04/2171? PagelD.2219 Page 9 of 10
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`of future harm” based on a loss of federal highway funding. Peoples Rights Org, Inn, 152 F.3d at
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`527.
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`As for its second alleged harm, it is difficult for the Court to see how a federal court’s denial
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`of declaratory relief, which, incidentally, is matter of discretion to begin with, Wilton v. Seven Falls
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`C0., 515 US. 277, 282, 115 S. Ct. 2137, 2140 (l995), can cause irreparable harm to a State. This
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`is so because if the State actually has standing to enforce the law or regulation at issue, some other,
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`more direct mechanism for enforcing it probably exists.
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`In any event, the case the State cites to
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`support its argument, Maiyland v. King, l33 S. Ct. 1 (2012), is easily distinguishable.
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`In King,
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`Maryland was enforcing its criminal laws and sought a stay of the Maryland Court of Appeals
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`judgment pending the Supreme Court’s review ofMaryland’s petition for a writ of certiorari. Thus,
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`Maryland was seeking injunctive relief to preserve a criminal conviction from its own courts and
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`was not seeking, as the State does here, what is essentially an advisory opinion on a matter pending
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`before a federal administrative body.
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`The State’s final proffered harrn_thc threat of future lawsuits by M22—fails because, as
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`indicated above, any such harm is speculative. See Hyatt Int 7 Corp. v. Coco, 302 F.3d 707, 712 (7th
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`Cir. 2002) (“The declaratory judgment plaintiff must be able to Show that the feared lawsuit from
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`the other party is immediate and real, rather than merely speculative”); United Parcel Sena, Inc.
`
`v. Pennte, No. 03 C 8019, 2004 WL 2064547, at *3 (ND. Ill. Sept. 8,, 2004) (“UPS’s bare
`
`speculation concerning the possibility that Pennie may, sometime in the future, bring a lawsuit
`
`against it (which is all that UPS offers in this regard) is not sufficient to invoke this court’s power
`
`to grant a declaratory judgment”). Moreover, “[t}he mere existence of a potentially adverse
`
`[trademark] does not cause an injury nor create an imminent risk of an injury.” Prasco, LLC, 537
`
`F.3d at 1338.
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`
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`

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`Case 1:16—CV—01084—GJQ-RSK ECF NO. 17 filed 04121117 PagelD.2220 Page 10 0f10
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`Finally, the State’s argument that the TTAB has already found standing is not persuasive.
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`As discussed above, this Court is bound by the strictures of Article H1, while the TTAB is not.
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`111. CONCLUSION
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`For the foregoing reasons, the Court concludes that it lacksjurisdiction over the State” 5 claim
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`for declaratory relief. Because Michigan courts are not subject to Article IH’S requirements and the
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`Court is not versed in Michigan’s standards for jurisdiction over declaratory judgment actions, the
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`Court will remand the case to the state court to allow it to decide wither to entertain the State’s
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`complaint.
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`A separate order will enter.
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`Dated: April 21, 2017
`
`Isr’ Gordon J. Quist
`GORDON J. QUIST
`UNITED STATES DISTRICT JUDGE
`
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`10
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`

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`EXHIBIT B TO
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`Notice of Outcome of Pending Civil Action
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`

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`Case 1:16-CV-01084-GJQ-RSK ECF N0. 18 filed 04121.]17 PagelD.2221 Page 1 Of 1
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`STATE OF MICHIGAN,
`
`Plaintiff,
`
`V.
`
`M22 LLC,
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`Defendant.
`
`
`/
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`Case No. 1:16—CV-1084
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`HON. GORDON J. QUIST
`
`ORDER OF REMAND
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`In accordance with the Opinion entered today,
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`IT IS HEREBY ORDERED that this case is REMANDED to the Ingharn County Circuit
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`Court because this Court lacks jurisdiction under Declaratory Judgment Act and Article 111 over the
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`State of Michigan’s complaint for declaratory relief.
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`This case is concluded.
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`Dated: April 21, 2017
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`ls/ Gordon J. Quist
`GORDON J. QUIST
`UNITED STATES DISTRICT JUDGE
`
`
`
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`

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`
`
`EXHIBIT C TO
`
`
`Notice of Outcome of Pending Civil Action
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`

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`IN THE CIRCUIT COURT FOR THE COUNTY OF INGI-IAM
`
`STATE OF MICHIGAN
`
`
`
`STATE OF MICHIGAN,
`
`The State,
`
`CASE NO. 16-648—CZ
`
`v.
`
`M22, LLC,
`
`Defendant.
`
`HON. CLINTON CANADY III
`
`
`
`Toni Harris
`Assistant Attorney Generai
`State of Michigan
`Van Wagoner Building
`425 W. Ottawa St.
`Lansing, MI 48913
`(517) 373 .7700
`harrisT19@miehigan.gov
`
`John Di Giacomo (P73056)
`Eric Misterovieh (P73422)
`Revision Legai, PLLC
`109 E. Front St, Ste. 309
`Traverse City, MI 49684
`(231) 714-0100
`j olm§chevisioniegaLeom
`erichrevisionlegaIeem
`
`
`
`ORDER GRANTING IN PART AND DENYING IN PART
`PLAINTIFF’S MOTION FOR SUMMARY DISPOSITION AND DENYING
`DEFENDANT’S MOTION FOR SUMMARY DISPOSITION
`
`At a session of said Court held in the
`
`City of Lansing, County of Ingham,
`State of Michigan, on the” fi
`day oflmy,2017y
`
`PRESENT:
`
`Clinton Canady III
`Circuit Court Judge
`
`The Court, having read briefs of the parties, listened to oral argument, and being fully
`
`advised in the premises:
`
`IT IS HEREBY ORDERED THAT the State of Michigan has standing and, therefore,
`
`Defendant M22, LLC’s Motion for Summary Disposition is DENIED.
`
`
`
`

`

`IT IS FURTHER ORDERED THAT Plaintiff State of Michigan’s Motion for Summary
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`Disposition is GRANTED IN PART AND DENIED IN PART as follows:
`
`i.
`
`The state and federal Manuals of Uniform Traffic Control Devices have the force
`
`and effect of law in the State of Michigan;
`
`ii.
`
`Defendant M22, LLC is a Michigan limited liability subject to the laws of
`
`iii.
`
`iv.
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`Michigan;
`
`The M22 state route sign is a traffic control device;
`
`This order ends this litigation and the Trademark Trial and Appeal Board may lift
`
`its stay. For the reasons stated on the record, the Court declines to determine
`
`whether Defendant M22, LLC’s federal trademark registrations issued by the
`
`United States Patent and Trademark Office constitute unlawful use.
`
`IT IS SO ORDERED.
`
`Pursuant to MCR 2.602, this Order resolves the last pending claim and closes the case.
`
`
`
`§j§/ g/yl-lonorable Clinton Canady III
`if Circuit Court Judge
`
`
`
`
`
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`

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`Approved as to form:
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`Dated:
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`pa” 8 (/7
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`Dated: E’d/II"?
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`
`
`my?! lxrbvwwo’z
`kw { (QM/ugly {W1 Lira/m;
`ohn Di Giacomo (P730556) P (pa 1
`l
`l >
`
`Counsel f01 M22, LLC
`
`
`
`@
`
`Toni Harris (P63 1 1 1)
`Assistant Attorney General
`State of Michigan
`
`
`
`
`
`