M22 Keeps Trademark After Agreement with Michigan

After seven years of litigation at the Trademark Trial and Appeal Board, the Ingham County Circuit Court, and the US District Court for the Western District of Michigan, many, many, many sleepless nights, and some of our best legal work, the Attorney General of the State of Michigan has dismissed its trademark cancellation proceeding against M22 with prejudice.

The M22 trademarks are valid, registered, fully enforceable, and incontestable under the law.

Read the full press release below:

07 March, 2019

03/07/2019 Traverse City, MI —M22, LLC, the iconic northern Michigan outdoor brand, will keep its federal trademark protection for the M22 logo following an agreement with the State of Michigan.

In a settlement signed on Feb. 28, M22 released the State from any grievances or future suits in trade for the State dismissing all claims against M22. The settlement also entails that M22 cannot be challenged by the State again on the matter and retains full rights to protect its trademark for retail and apparel nationwide.

“This is a huge win for our customers and our team,” said Keegan Myers, co-founder of M22, LLC. “It’s been a long struggle for us, but we stayed with it because we believed in the strength of our brand and what it means to our loyal customers and employees.”

Brothers Keegan and Matt Myers founded the company in 2004. M22 first filed the logo for a federal trademark in 2006 and was awarded in 2007. After the US Patent and Trademark Office’s required five-year period of consecutive use, the trademark had become “incontestable,” the strongest status for a trademark.

However, in 2012 then Michigan State Attorney General Bill Schuette wrote an opinion claiming no entity could claim control over a highway marker design because it was public domain. This opinion kicked off a seven year legal contest at both the state and federal level.

Earlier this year, Attorney General Dana Nessel succeeded Bill Schuette, and her office re-examined the case, deciding not to move forward with litigation.

“We’ve believed that our position on the law has been correct from day one,” said John Di Giacomo, partner at Revision Legal and M22’s lead attorney on the case. “Now, seven years later, we are glad that the new attorney general has reviewed the case and has determined that it is not worth pursuing further.”

With the trademark undisputed, M22 will continue to protect the brand. The company holds several federal trademarks extending to any retail and apparel products as well as the M22 Challenge race. The trademark does not prevent businesses from using “M-22” to describe a location or directions.”

“We’re thankful to have come to an amicable solution with the State of Michigan,” said Matt Myers, co-founder at M22, LLC. “We love our state, and our outdoor brand reflects the passion we have for northern Michigan and exploring its natural wonders.”

For more information about M22’s trademark or usage examples, visit m22.com/pages/trademarks.

Understanding Incontestability and Why It Mattered

The concept of trademark incontestability was central to M22’s legal position. Under the Lanham Act, 15 U.S.C. § 1065, after five consecutive years of use in commerce following registration, a trademark owner can file an affidavit with the USPTO declaring the mark incontestable. An incontestable mark enjoys conclusive evidence of the registrant’s exclusive right to use the mark in connection with the goods and services specified in the affidavit, subject to a limited set of defenses.

Incontestable status significantly narrows the grounds on which a challenger can attack a registration. Challenges based on mere descriptiveness — the argument that a mark simply describes the goods or services rather than identifying their commercial source — are not available against an incontestable mark. See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). This was critical in the M22 dispute. The Michigan Attorney General’s office could have argued that M22’s use of a highway sign design was merely informational or descriptive of the road. But M22’s incontestable status significantly constrained the grounds available for that attack.

Government Entities as Trademark Challengers

The M22 case presented an unusual dynamic: a state government acting as the challenger to a private party’s trademark. The Michigan Attorney General took the position that M22’s logo — which resembles the M-22 state highway marker — was effectively state property and therefore not properly trademarked by a private company. This raised a significant legal question about the line between public domain government symbols and protectable private marks.

Government entities do occasionally challenge private trademark registrations. Federal agencies, state governments, and municipalities have standing to file cancellation petitions with the TTAB if they believe a private mark conflicts with a government symbol or misappropriates public property. The legal standards governing such challenges are fact-intensive and depend on whether the government holds protectable trademark rights in the symbol itself and whether the private use is likely to cause confusion about the official source of the goods.

In M22’s case, the legal position of the Attorney General was always weak. M22 had been using and registering its logo since 2006 — the “M22” branding was M22, LLC’s commercial identifier for its outdoor apparel and lifestyle brand, not an attempt to deceive consumers into thinking they were buying an official Michigan Department of Transportation product. The highway marker design was the inspiration for the brand, but M22’s use of the mark in commerce was as a source identifier for private goods, which is exactly what trademark law protects.

The TTAB Process and What to Expect

M22’s case involved proceedings before the Trademark Trial and Appeal Board, the administrative tribunal within the USPTO that adjudicates trademark opposition and cancellation proceedings. TTAB proceedings are inter partes proceedings conducted before a panel of administrative trademark judges. They follow rules derived from the Federal Rules of Civil Procedure and include discovery, summary judgment practice, and trial by submission of evidence and briefing.

TTAB proceedings do not take place in a courtroom, but they are adversarial and legally rigorous. Discovery can be extensive, including requests for production of documents, interrogatories, and depositions. The standard of proof is a preponderance of the evidence. A party that loses before the TTAB can appeal to the federal Court of Appeals for the Federal Circuit or to a federal district court. Federal district court review is de novo, meaning the court considers the evidence fresh rather than simply reviewing the TTAB’s decision for error.

For businesses facing TTAB opposition or cancellation proceedings, the stakes are significant: the outcome determines whether a federal trademark registration survives. Working with experienced trademark attorneys who understand both TTAB procedure and substantive trademark law is essential. The M22 case demonstrates that even a well-funded government opponent cannot succeed against a strong trademark when that mark is validly registered, properly maintained, and vigorously defended.

For additional information, or if your business is facing a trademark cancellation proceeding, please contact our Trademark Attorneys with the form on this page, or call us at 855-473-8474.