Traverse City Record-Eagle

June 7, 2012

Attorney General opinion: Anyone may use route marker

By vanessa Mccray

TRAVERSE CITY — A local clothing company that created a brand featuring the distinctive, black-and-white M-22 road sign will continue to protect the design, despite a state attorney general opinion that trademark law doesn't cover route markers.

Michigan Attorney General Bill Schuette released an opinion that stated no one can claim "exclusive control" of a state highway route marker design because it "is in the public domain" and "not subject to protection under trademark law."

"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," Schuette wrote in a May 29 opinion.

Brothers Matt and Keegan Myers launched the popular M22 brand, which now has stores in Glen Arbor and Traverse City and celebrates the scenic highway that hugs Lake Michigan in Leelanau, Benzie and Manistee counties. The road sign features prominently on items ranging from clothing to coffee mugs.

The brothers and their attorney Enrico Schaefer said they will continue to work to protect the handful of trademarks related to the M22 design.

"If anything, we're at our strongest point ever in our protection of trademarks," Keegan Myers said.

Schuette addressed his opinion to state Rep. Frank Foster, of Petoskey. Foster asked "whether a private entity can claim exclusive control over a state highway route marker design" for merchandise use.

"We had companies trademarking public domain for their own benefit. When we've got notable road signs ... that should be a public good so that all companies can share in that," said Foster, who looked into the matter after an Emmet County general store asked about a business profiting from a sign.

Schuette's opinion references both the Myers' M-22 use and the use of M-119 by Route Scouts, LLC, of Harbor Springs. Schuette wrote that "the second corporation applied for a trademark" on the M-119 highway route marker design but failed to obtain it because the U.S. Patent and Trademark Office "deemed it too similar to the M22 registered trademark." Route Scouts obtained a Patent and Trademark Office registration "for the plain character mark of 'M 119'," he wrote.

But Schuette contends the corporations can't exclude others from using the route marker design and "must disclaim any right or interest in intellectual property that does not belong to them."

"Any other individual or company is also free to use the design to promote commercial goods and services," he wrote, also stating: "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."

Heidi Marshall, of Route Scouts, said she had not read the attorney general's opinion.

"As far as we are concerned, legally we have the trademark for its use on T-shirts and ball caps and other apparel items," she said. "We did a lot of research. We hired, you know, top-of-the-line attorneys who specialized in this so that we could proceed with confidence and be above-board with everything we've put our energies into."

Marshall referred additional questions to business partner Mary Roberts, who declined comment.

Schaefer, the attorney representing M22, said customers began confusing the Myers' product with M-119 items. M22 sent letters asking makers of M-119 items to stop, Schaefer said.

"We hope that they will respect our trademark rights and go in a different direction. And, if the time comes where litigation is necessary, we will take a hard look at that," he said.

M22 will continue to protect itself from those who copy it, said Schaefer, who said nothing changes as a result of the attorney general's opinion.

"The United States government has taken the position that M22's trademarks are in fact valuable," Schaefer said. "The states have literally nothing to do with trademark law."

Schaefer called the opinion "meaningless" and discounted the public domain argument as having "nothing to do with trademark law."

Keegan Myers said there's a distinction between using the M-22 sign "for directions" or geographical marker in the public domain and using it as "a brand" for clothing.

The brothers credit the popularity of the M22 items to customers' fond feelings for the area it represents.

"We just knew what it meant to us," Matt Myers said. "It's way deeper than just a logo on a T-shirt."