Legal

M22 owns a family of registered trademarks to protect our brands. M22, LLC is the owner of numerous common law and registered trademarks for the M22 characters and design.

M22, LLC owns federally registered trademark rights in the M22 mark for use with hats, t-shirts, long sleeve shirts, sweatshirts, pants, shorts, underwear, tank tops, wine and retail store services. It also owns the rights to the M22 Challenge mark for use with athletic competitions.

M22, LLC’s registrations with the United States Patent and Trademark Office:

• U.S. Reg. No. 3,348,635
• U.S. Reg. No. 3,427,900
• U.S. Reg. No. 3,992,151
• U.S. Reg. No. 3,992,159
• U.S. Reg. No. 3,996,410
• U.S. Serial No. 85/135,576

The M22 and LOVE Michigan brands and logos are registered trademarks with the United States Patent and Trademark Office, an agency of the United States Department of Commerce. Owning a registered trademark provides several advantages, including:

• Constructive notice to the public of the registrant’s claim of ownership.
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and services listed in the registration.
• The ability to bring an action concerning the mark in federal court.
• The use of the U.S. registration as a basis to obtain registration in foreign countries.
• The ability to file the U.S. registration with U.S. Customs to prevent importation of infringing foreign goods.

Trademark rights are created by using a word, name or symbol in commerce in association with the sale of goods or services. See 15 U.S.C. § 1127. “The first to use a mark in the sale of goods or services is the ‘senior user’ of the mark and gains common law rights to the mark in the geographic area in which the mark is used.” Allard Enterprises, Inc. v. Advanced Programming Res., Inc., 249 F.3d 564, 572 (6th Cir. 2001). Federal registration provides nationwide priority over all others to use a trademark in association with the sale of the goods or services listed in the trademark registration. Id.

Since M22, LLC was the first to use the M22 mark in association with the sale of hats, t-shirts, long sleeve shirts, sweatshirts, pants, shorts, underwear, tank tops, wine, stickers, accessories and retail store services, M22, LLC obtained common law trademark rights to the M22 mark. Through its trademark registrations with the United States Patent and Trademark Office, M22, LLC also has rights to the M22 mark across the United States.

While this means that M22, LLC can prevent others from selling similar goods bearing the M22 mark, it does not mean that M22, LLC can prevent businesses from truthfully indicating their location with the term “M-22.” For example, while it is trademark infringement to sell wine bearing the M22 mark, it is not infringement to state that your store is located on M-22.

Trademark law is intended to protect against consumer confusion, and M22, LLC enforces its trademark rights to ensure that consumers are not confused into believing that copycat and counterfeit goods originate from M22, LLC. M22, LLC takes pride in the quality of its merchandise and the goodwill of its brand, and takes steps to ensure that consumers can continue to expect quality goods when they reach for goods bearing the M22 mark.

On May 29, 2012, State Representative Frank Foster asked Michigan Attorney General Bill Schuette to issue an opinion on M22, LLC’s trademark registrations. Representative Foster made this request after M22, LLC sent a demand letter to a store in his district that was selling, in the opinion of M22, LLC’s attorney, counterfeit copies of M22 wine made by M22, LLC’s own winemaker. Attorney General Schuette then issued an opinion purporting to analyze the law applicable to M22, LLC’s trademark rights.

Michigan Attorney General opinions are advisory and have no precedential authority in Michigan courts. An attorney general’s opinion does not bind the state courts. See Northland Family Planning Clinic, et al. v. Cox, et al., 487 F.3d 323, 338 (6th Cir. 2007). “[A]n Attorney General’s Opinion has no precedential value, and can be revised any time by this or successive Attorneys General.” Id. And a state attorney general’s opinion has no effect on federal law, which governs trademark registration with the United States Patent and Trademark Office. See 15 U.S.C. § 1051.

The opinion was also incorrect. Its principal claim was that, since the State of Michigan “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.” For this position, the Attorney General relied primarily on the U.S. Supreme Court case Dastar Corp. v. Twentieth Century Fox Film Corp.

In that case, Dastar repackaged a formerly copyrighted television series, “Crusade in Europe,” and sold it for substantially less than Twentieth Century Fox, the creator of the series. Because Twentieth Century Fox failed to renew its copyright, the series had fallen into the public domain and Dastar could not be sued for copyright infringement, so Twentieth Century Fox sued for trademark infringement instead. The Supreme Court found Dastar was not liable, because Dastar sold the series as its own product under its own brand and did not try to pass it off as originating from Twentieth Century Fox. See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (2003).

Though the Attorney General cited Dastar to claim that M22, LLC cannot have trademark rights in the M22 mark, the case stands for the opposite conclusion. Just like Dastar, M22, LLC took a design the State of Michigan admits is in the public domain and made it its own, by selling goods under that symbol and earning trademark rights through that use.

This is not uncommon. Public signs and symbols are incorporated into registered trademarks often enough that the U.S. Patent and Trademark Office’s design code manual has a specific category for them. Many trademarks incorporate formerly public domain works, including some of the best-known brands in the world, such as Disney’s Sleeping Beauty mark and the US-1 mark. In short, the Attorney General’s opinion was an incorrect statement of the law.

March 5, 2019, Traverse City, MI. M22, LLC will keep its federal trademark protection for the M22 logo following an agreement with the State of Michigan.

In a settlement signed on February 28, 2019, M22 released the State from any grievances or future suits in exchange for the State dismissing all claims against M22. Under the settlement, 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 it was registered in 2007. After five years of continuous use, the registration became “incontestable,” the strongest status a trademark can have.

In 2012, then Attorney General Bill Schuette issued an opinion that began a seven-year legal contest at both the state and federal level. In early 2019, Attorney General Dana Nessel’s office re-examined the case and decided 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 covering 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 give directions.

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

We believe transparency is important to any successful business, and trademark law can be confusing. Here is how we approach it:

• We talk first. If someone is infringing on our trademark, we reach out to discuss it before anything else. We send cease and desist letters only as a last resort. Most of the time, people thank us for letting them know and respect our rights as trademark owners. Federal law requires trademark owners to enforce their marks in order to keep them.
• Trademarks protect you, the customer. When you buy an M22 product or see one on the market, you should be able to expect that it came from us. Our brand guidelines and quality standards mean every M22 product is made from the best materials we can source, from certified suppliers, finished in specific ways and marketed in our own style. No one should see a similar logo and wonder whether M22 made it.
• We don’t claim to own Michigan’s road signs. The M-22 highway marker remains in the public domain. Our trademark protects the goods and services we sell under the M22 brand against any logo that could be confused with, or dilute, what we offer. Over the years we have built a meaning for M22 that goes well beyond a road. When other companies copy our business model with a logo that is the same as or similar to ours, and that causes confusion or dilutes our brand, the law requires us to address it.
• We give back. M22 supports businesses across Michigan by working with local vendors and wholesale partners, employs full-time and seasonal staff locally, and sponsors school teams, events, athletes and ambassadors. Since day one, 1% of our profits has gone to the Leelanau Conservancy, which named M22 its 2015 Business Donor of the Year.