Patching a Gap in Trademark Law the Hard Way

The United States Congress rescued citizens in the state of Montana from a Las Vegas businessman who attempted to expropriate, albeit legally via trademark registration, one of their cherished assets: a slogan “The Last Best Place”.  They achieved the right result, but I think they went about it incorrectly.  Congress blocked the possibility of trademark rights being asserted over the slogan by passing a bill forbidding the U.S. Department of Commerce from using its funds to register, issue, transfer or enforce any trademark over the phrase.  This patch-work approach to fix a flaw in trademark law is not sustainable. Legislators should instead have made an amendment to trademark law to fix the issue permanently.

“The Last Best Place” has been used by hundreds of Montanans for marketing purposes since it was coined by a University of Montana professor in 1988.  Some twelve years later, a wealthy Las Vegas business man moved to Montana, opened a luxury guest ranch, and filed for trademark registration on the slogan so he could use it exclusively to sell a wide variety of products.

Trademark law exists to protect consumers from confusion as to the source of a product.  It also assures producers that their competitors will not reap the financial, reputation-related rewards associated with their marks.  A trademark owner has a right to prohibit the use of similar marks by others if such use would lead to confusion as to the source of the product.

Trademark law should disallow ownership of a widely used public slogan.  Trademark law currently disallows new ownership over a widely used slogan only if prior users (i.e. the citizens of Montana) had asserted their common law trademark rights over the slogan by placing a “™” symbol next to it.  Since Montanans had not used the “™” symbol they were out of luck and would not have been able to stop anyone from claiming rights over the slogan without Congress’ help.

The requirement that a “™” symbol be used to assert common law trademark rights makes sense when someone is looking for exclusive ownership – it provides a warning to others that the slogan is protected.  However, this requirement is quite harsh, and arguably contrary to the objectives of trademark law when exclusive ownership is not sought.  Why is it not possible to ensure that an already widely used slogan remains free for use in the public domain?

I am not holding my breadth for a reform to trademark law to disallow exclusive rights on a widely used slogan.  Such an amendment would require a shift in policy from individual IP rights towards communal ownership, where assets belong to a society as a whole.  The bill congress passed is a sign of the latter, but does it demonstrate a new trend in that direction?  At least for now Montanans can rest easy and not have to worry about anyone taking their “Last Best Place”.

One Comment
  1. One wonders how, if there was widespread use by many different businesses in Montana of this phrase, it could be considered distinctive enough to be the trademark of any one person. Registration should have been refused if there was any opposition on this basis, supported by suitable evidence There is a bar on third party registration of state insignia (Lanham Act, s. 2(b)), but I am not sure that the slogan had attained that status. Possibly it might have been barred as falsely suggesting a connection with Montana (Lanham Act, s. 2(a)), but one would need some evidence of this.

    Unless there is something special about Montana law, so far as I am aware the use of “tm” or “sm” is not required to acquire common law protection for a mark in the US or elsewhere. That marking for a trade or service mark is nevertheless common & useful as a warning that the symbol is being claimed as at common law as a mark, but it is not mandatory. In Canada, a similar use by a government could be protected through the government’s filing notice of the use as an official mark with the Registrar of Trade-marks. The government then will get trademark-like rights against later users, and can stop registration. I don’t think the US has similar provisions. Either the government would have to file a regular trademark application like anyone else, or get a statute passed in its favour, like the Olympic authorities have got for Olympic marks.

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