The following opinion is presented on-line for informational use only and does not replace the official version. (Mich. Dept. of Attorney General Web Site - http://www.ag.state.mi.us)
STATE OF MICHIGAN
BILL SCHUETTE, ATTORNEY GENERAL
Michigan highway route marker design as a trademark
No entity can lawfully claim exclusive control over use of the State’s highway route marker design because the design is in the public domain and is otherwise not subject to protection under trademark law.
Opinion No. 7265
May 29, 2012
Honorable Frank D. Foster
Lansing, MI 48909
You ask whether a private entity can legally claim exclusive control over a state highway route marker design for use on novelty merchandise and other items.
Information supplied with your request indicates that at least two Michigan corporations claim to have exclusive control over the use of a Michigan highway route marker design. (Attachment 1.) The first corporation claims to have exclusive control over the use of the plain characters “M 22” as well as the M-22 highway route marker design, to promote various goods and services. State Highway M-22 is a picturesque and well-traveled 116-mile drive along Lake Michigan through Manistee, Benzie, and Leelanau Counties.1 The first corporation obtained registrations for a trademark and service mark2 with the United States Patent and Trademark Office (USPTO) for the standard character mark “M22” (Attachment 2) with no particular claim to color, style, or design. The corporation also obtained a separate registration for a design identical to the M-22 highway route marker. (Attachment 3.)
The second corporation claims exclusive control over the use of the plain characters “M 119” when used to promote goods and services. State Highway M-119 is known as the “Tunnel of Trees,” and is a 20-mile, scenic drive stretching between the Petoskey area and Cross Village in Emmet County.3 The second corporation obtained a USPTO registration for the plain character mark of “M 119” (Attachment 4) with no particular claim to color, style, or design.4 The second corporation applied for a trademark on the design of the M-119 highway route marker, but failed to obtain one because the USPTO deemed it too similar to the M-22 registered trademark. Nevertheless, the second corporation claims exclusive control over use of the M-119 highway route marker design to promote goods and services.
Both corporations have demanded that other businesses stop using the Michigan highway route marker designs for M-22 and M-119 to promote their own goods and services.
You ask whether these entities or others may claim exclusive control over Michigan’s highway route marker design through trademark law or by other means.
Trademarks are governed under federal law by the Lanham Act, 15 USC 1051 et seq., and under state law by the Michigan Trademark and Service Mark Act (MTSMA), 1969 PA 242, MCL 429.31 et seq., and common law. Definitions under each body of law are distinct, but a trademark may generally be understood to mean “any visible sign or device used by a business enterprise to identify its goods and distinguish them from those made or carried by others.” 5
Federal trademark law represents an exercise of Congress’ authority under the Commerce Clause. Dawn Donut Co v Hart’s Food Stores, Inc, 267 F2d 358, 365 (CA 2, 1959). The purpose of the Lanham Act is to prevent consumer confusion in the marketplace by providing an assurance to a consumer about the origin of the goods or services the consumer purchases. Foley, Kathryn M., Protecting Fictional Characters: Defining the Elusive Trademark-Copyright Divide, 41 Conn L Rev 921, 939 (February 2009). When a consumer purchases a good or service with a registered trademark, the consumer has some certainty about the origin of the good or service and can make an informed decision on whether to complete the purchase. See Shakespeare Co v Lippman’s Tool Shop Sporting Goods Co, 334 Mich 109, 113-114; 54 NW2d 268 (1952) (observing that “[t]he function of a trade-mark is simply to designate the goods as the product of a particular manufacturer or trader and to protect his good will against the sale of another’s product as his”).
Trademarks are similar to but distinct from copyrights. Copyrights protect creative works and are created under authority of the Copyright Clause of the United States Constitution, which states that Congress can create laws “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” US Const art 1, § 8, cl 8; Trade-Mark Cases, 100 US 82; 25 L Ed 550 (1879). The purpose of copyright law is to enrich the public domain of creative works by rewarding creativity with the opportunity to have a limited monopoly over a creative work. Sony Corp of America v Universal City Studios, Inc, 464 US 417, 477; 104 S Ct 774; 78 L Ed 2d 574 (1984) (citations omitted).
But once a copyright in a creative work expires, the former rights-holder may not enforce his or her exclusive control over the intellectual property. Kellogg Co v Nat’l Biscuit Co, 305 US 111, 120–122; 59 S Ct 109; 83 L Ed 73 (1938); Singer Mfg Co v June Mfg Co, 163 US 169, 185; 16 S Ct 1002; 41 L Ed 118 (1896). The creative work becomes public property. Singer Mfg Co, 163 US at 185. “The prevailing view of the public domain is that of a commons, where material is free for anyone to take and use without restriction.” Heymann, Laura A., The Trademark/Copyright Divide, 60 SMU L Rev 55, 85 (Winter 2007). Thus, items in the public domain generally are not subject to copyright protection. See Golan v Gonzales, 501 F3d 1179, 1189 (CA 10, 2007) (“[T]he principle [is] that no individual may copyright a work in the public domain, [in] that ordinarily works in the public domain stay there”) (citations omitted).
Unlike copyrights, the term of a trademark is indefinite. “[F]ederal trademark law provides the grant of rights to the trademark owner for an indefinite period, the duration of which depends on public recognition that the trademark identifies the user’s goods and distinguishes them from the goods of others.” Time Mechanisms, Inc v Qonaar Corp, 422 F Supp 905, 910 (DNJ 1976) (citation omitted). It is thus possible for a trademark owner to maintain rights in a registered mark in perpetuity, so long as the registration with the USPTO is renewed every ten years. 15 USC 1058-1059.
With these general legal principles in mind, the question is whether Michigan’s state highway route marker design is in the public domain and thus not subject to trademark or other similar protections.
Both federal and state law provide for 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 federal MUTCD is promulgated by the Department of Transportation and sets “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). 6 See 23 CFR 655.603. In order 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).
Consistent with these federal provisions, the Michigan Vehicle Code, 1949 PA 300, MCL 257.1 et seq., requires the Michigan Department of Transportation (MDOT) and the Michigan State Police to adopt and maintain a uniform system of “traffic control devices,” which includes all signs, 7 that conforms with the federal MUTCD. See MCL 257.608. 8 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. 9 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. (Attachment 5, Page 2). But it allows states the option to create a unique design, and Michigan chose to maintain its historic design using a white diamond rather than a circle, and a block “M” over the black number. (Attachment 5, Page 4.) 10
With respect to traffic control device designs – like Michigan’s highway route marker design – both the federal and the Michigan MUTCD provide that such designs are in the public domain:
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; Attachment 5.] 11
The MUTCD is consistent with caselaw establishing that materials or works in the public domain are not subject to trademark protection. See In re Chippendales USA, Inc, 622 F3d 1346, 1352; 96 USPQ2d 1681 (Fed Cir, 2010) (“If the mark is not inherently distinctive, it is unfair to others in the industry to allow what is in essence in the public domain to be registered and appropriated, absent a showing of secondary meaning”). Even work that was previously subject to copyright protection cannot be protected under trademark law if the work has passed into the public domain. 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”). Accordingly, Michigan’s highway route marker design cannot – indeed “shall not” – be subject to trademark protection as provided for in the MUTCD.
The State of Michigan created the highway route marker design and could claim ownership of the copyright if it had not expressly abandoned those rights by proclaiming in the MUTCD that the designs are in the public domain. See 17 USC 201(a)-(b). “Rights gained under the Copyright Law may be abandoned. Abandonment of such rights, however, must be manifested by some overt act indicative of a purpose to surrender the rights and allow the public to copy.” Hampton v Paramount Pictures Corp, 279 F2d 100, 104; 125 USPQ 623 (CA 9, 1960) (citations omitted). By publishing the designs to the public with the statement that the designs are to remain in the public domain, the State of Michigan took an overt act to surrender its copyright in the design.
Because the State of Michigan, the creator of the design, placed the Michigan highway route marker design in the public domain, no entity can lawfully obtain intellectual property protection of the design under trademark or copyright law. The two corporations at issue could not gain copyright protection over the Michigan highway route marker design because neither created the design. See 17 USC 201(a)-(b). And under the Supreme Court’s decision in Dastar, they cannot use trademark law to perpetually protect a design that they did not create and is in the public domain. The fact that they have appropriated the design from the public domain and affixed it to merchandise offered for sale does not create a legitimate basis for trademark protection. To do so would create a “mutant copyright” over works in the public domain that the Supreme Court has specifically sought to avoid. Dastar, 539 US at 34.
The corporations may continue to utilize the Michigan highway route marker design alone or incorporate it within another design. But they must “disclaim” any right or interest in intellectual property that does not belong to them. 15 USC 1056(a) (“The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered”). 12 Any other individual or company is also free to use the design to promote commercial goods and services. 13 In other words, the corporations may not exclude other persons and businesses from using the Michigan highway route marker design on the basis of trademark law because a design in the public domain generally cannot be made the subject of a trademark or other protection.
Despite these legal principles and facts, the first corporation registered a trademark for the M-22 highway route marker design. In addition to the route marker design being in the public domain, there are at least two other reasons why this design does not qualify for trademark protection under the Lanham Act. Each is based on section 2 of the Lanham Act, 15 USC 1052, which provides that certain marks are not permitted in the federal register, and provides a process whereby a party may challenge a registration. 14
First, use of the Michigan route marker design as a trademark falsely suggests a connection with the State of Michigan. Registration for marks that “falsely suggest a connection with persons, living or dead, [or] institutions” is precluded. 15 USC 1052(a). The State of Michigan and MDOT qualify as both persons 15 and institutions 16 as defined in the Lanham Act, and the route marker design has been used since the early 1900’s in such a way that the State and MDOT’s reputations are directly associated with the respective roads on which it appears. The corporations’ use of the Michigan route marker design and enforcement suggests that the State of Michigan approved or somehow licensed that use, which is not the case.
Second, use of the Michigan route marker design on the corporations’ goods, is an improper trademark because it is primarily geographically descriptive, contrary to Section 2(e)(2) of the Lanham Act, 15 USC 1052(e)(2). See, e.g., Baglin v Cusenier Co, 221 US 580, 591; 31 S Ct 669; 55 L Ed 863 (1911) (“[N]ames which are merely geographical cannot be the subject of exclusive appropriation as trade-marks”). 17 The Trademark Trial and Appeal Board has stated, “[T]he purpose of Section 2(e)(2) of the [Lanham] Act is not to punish a particular business for using a geographic name, but rather to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate.” In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007), slip op. at 19, 23 (finding “YOSEMITE” for beer from California brewery to be primarily geographically descriptive).
Michigan trademark law requires the same. The MTMSA is a model statute based on the Lanham Act. Specifically, it mirrors section 2(e)(2) of the Lanham Act provision in order to similarly prevent geographically descriptive marks from entering the Michigan trademark register. See MCL 429.32(e). 18 At common law, the Michigan Supreme Court came to the same conclusion as the Trademark Trial and Appeal Board in Merced, stating, “[T]he general rule is that geographic and place names may be used by all for indicating the location of a business, subject to the proviso that any such use which occasions actual or probable confusion, or misleading of the public, constitutes unfair competition and may be enjoined.” Belvidere Land Co v Owen Park Plaza, Inc, 362 Mich 107, 113; 106 NW2d 380 (1960) (citations omitted).
All of the facts presented in conjunction with your request involve placing the M-22 and M-119 Michigan highway route marker designs on apparel, novelty items, and to advertise events that all originate near the respective Michigan highways in a geographically descriptive manner. People who travel along M-22 and M-119 associate the signs with the Northwestern Lower Michigan region and everything contained within it. That association is not specific to the corporations or any other business. Instead, it encompasses the natural beauties, distinctive shopping and tourism experiences, local foods, and other attractive qualities of the geographic region. One person or company cannot claim to have produced all of the good will associated with the particular highway route marker design that represents the region. The good will does not just belong to these corporations who have used the Michigan route marker design as a trademark for the past few years. The good will belongs to the State of Michigan and its citizens who built or improved the roads and the communities that surround them.
Both federal and Michigan law support the conclusion that no entity may lawfully commandeer the Michigan route marker design as its exclusive trademark because the design is in the public domain. Other businesses in Michigan may use the M-22 route marker to promote the region as a whole, just as businesses near the “Tunnel of Trees” may use the M-119 route marker design. Indeed, the Lanham Act was not meant to deprive commercial speakers of the ordinary utility of descriptive words. “If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase.” Cosmetically Sealed Industries, Inc v Chesebrough-Pond’s USA Co, 125 F3d 28, 30 (CA 2, 1997). See also Park ‘N Fly, Inc v Dollar Park & Fly, Inc, 469 US 189, 201; 105 S Ct 658; 83 L Ed 2d 582 (1985) (noting safeguards in Lanham Act to prevent commercial monopolization of language).
It is my opinion, therefore, that no entity can lawfully claim exclusive control over use of the State’s highway route marker design because the design is in the public domain and is otherwise not subject to protection under trademark law.
1 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. See <http://www.michigan.gov/som/0,4669,7-192-29938_30240-220123--,00.html> (accessed May 8, 2012). 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.
2 Trademarks and service marks are regulated under the same standards. See 15 USC 1053. The term trademark is used to refer to both for convenience.
3 A 13 mile segment of M-119 has also been designated a Michigan Scenic Heritage Route. See <http://www.michigan.gov/som/0,4669,7-192-29938_30240-220123--,00.html> (accessed May 8, 2012).
4 This opinion does not address either corporation’s use of the character marks “M22” and “M 119.” (Attachment 2 and Attachment 4.)
5 “Trademark.” Encyclopedia Britannica. Encyclopedia Britannica Online. Encyclopedia Britannica Inc., 2012. Web. 28 Mar. 2012. <http://www.britannica.com/EBchecked/topic/601724/trademark> (accessed May 8, 2012).
6 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.”
7 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).
8 The federal MUTCD is available at <http://mutcd.fhwa.dot.gov/kno_2009.htm> (accessed May 8, 2012).
9 MDOT’s version of the MUTCD is available at <http://mdotwas1.mdot.state.mi.us/public/tands/plans.cfm> (accessed May 8, 2012).
10 Michigan 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. For additional in-depth historical analysis, see Michigan Highways: The Great Routes of the Great Lakes State <http://www.michiganhighways.org> (accessed May 8, 2012).
11 This provision has been part of the Michigan MUTCD since 2005, two years before the first corporation’s first use in commerce of the M-22 route marker design. (Attachment 3.)
12 For example, the “M-22 Challenge” trademark (Attachment 6) is a completely original design that incorporates the M-22 highway route marker design, as is the stylized mark incorporating the M-119 road sign. (Attachment 7.) Both companies could maintain a registered trademark and disclaim any exclusive rights over the route marker design.
13 Such use remains subject to any other applicable laws. For example, the State of Michigan may have a cause of action under section 43(a) of the Lanham Act to bar the commercial use of an image to avoid confusion, mistake, or prevent a business from deceiving someone to believe that the images were affiliated with the State of Michigan or the Michigan Department of Transportation. 15 USC 1125(a).
14 A party may challenge an erroneously issued federal registration, as provided by section 15 of the Lanham Act, 15 USC 1065. A challenge must be brought within five years of the period during which the mark holder has made continuous use of the trademark after its registration.
15 “The term ‘person’ also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.” 15 USCS 1127.
16 The term “institution” is defined broadly. See In re Shinnecock Smoke Shop, 571 F3d 1171, 1173; 91 USPQ2d 1218 (Fed Cir, 2009) (“[O]rdinary meaning of ‘institution’ suggests the term is broad enough to include a self-governing Indian nation”).
17 An applicant for a federal trademark that is refused under section 2(e) for being primarily geographically descriptive may apply for registration under section 2(f) by showing that the mark has gained “secondary meaning.” 15 USC 1052(f).
18 MCL 429.32(e) states: “A mark by which the goods or services of an applicant for registration may be distinguished from the goods or services of others shall not be registered if the mark . . . [c]onsists of a mark which, when applied to the goods or services of the applicant . . . is primarily geographically descriptive or deceptively misdescriptive of them.”
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