IP Osgoode » Anita Mielewczyk

In Montana, a Popular Expression Is Taken Off the Endangered List
November 2, 2008 by Anita Mielewczyk

What happens when a corporation files for a trademark on a popular phrase? In the case of “The Last Best Place”, the cries from outraged Montanans were heard all the way into the U.S. House of Representatives and the Senate, where lawmakers took unusual steps recently to try and ensure that no one could have exclusive rights to the phrase.[1]

As of August 2008, according to the New York Times, committees in both the House and Senate have been in the process of approving language in a Department of Commerce appropriations bill to prevent multi-millionaire, David E. Lipson, from having the exclusive rights to the phrase.

Lipson filed 8 applications with the U.S. Patent and Trademark Office since 2001,[2] to cover goods and services ranging from real estate development, household goods, jewelry and a mail order catalog company. The applications didn’t get much attention until a local paper, The Missoulian, wrote about his efforts.[3]

Montana businesses[4] have been using the phrase since 1988, when it was first coined by William Kittredge, when he and Annick Smith were putting together an anthology of Montana prose and poetry. According to The Missoulian, Kittredge was “desperate for a title” when he thought up the phrase and he is vehemently opposed to Lipson’s trademark applications.[5]

The debate has even brought Republican and Democratic politicians together. They took advantage of the “opposition period” that every application is subject to when it is filed, examined and approved, so that Lipson would not be issued notices of allowance.[6]

When the on-line paper, New West, went looking for Lipson supporters in 2005, Republican senator Conrad Burns said: “The Last Best Place’ is community property at this point and it seems like it’s not the wisest notion to try and trademark it.”[7]

In this context, would a phrase taken from a national anthem also qualify as community property? The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC) has applied to trademark the phrase “with glowing hearts”,[8] part of the lyrics of Canada’s national anthem, Oh Canada. The melody and lyrics have been in the public domain since 1980.[9] Should VANOC be free to trademark a portion of the lyrics, for use on various wares and services, including gasoline, dish towels and credit cards?

Those who believe this phrase belongs to all Canadians, as several blogs show, still have their chance to voice their opposition to this application.[10][11][12] Opposition can be registered for a fee of $750.00, and there is no limit to the number of people who can join together. However, the registrar can dismiss the opposition if it does not raise a “substantial issue”, so CIPO[13] recommends that a trademark agent be hired to carry out the process, which can take anywhere from 2-4 years.[14]

Will Canadians want to oppose this application the way Montanans did for “The Last Best Place”? After all, the lyrics go on to say:

With glowing hearts we see thee rise,
The True North strong and free![15]

[1] Jim Robbins, New York Times, August 18, 2008. http://www.nytimes.com/2008/08/18/us/18trademark.html?_r=1&sq=montana%20trademark&st=cse&adxnnl=1&oref=slogin&scp=1&adxnnlx=1219676417-+vLeV2ijq3aL82SU8eDH8A

[2] United States Patent and Trademark Office, Trademark Database, September 30, 2008.

http://www.uspto.gov/main/trademarks.htm

[3] Robert Struckman, The Missoulian, July 17, 2005.

http://www.missoulian.com/articles/2005/07/17/news/top/news01.txt

[4] Biggerstaff Real Estate and Development Co., website September 30, 2008.

http://www.biggerstaffmt.com/

[5] Supra, note 3.

[6] Supra, note 2.

http://www.uspto.gov/web/trademarks/workflow/next.htm