Montana: The LAST BEST PLACE that Doesn’t Need a Trademark Registration

Why obey federal trademark law (aka the Lanham Act) when you can just pass a new law that exempts you from it?  Montana’s Senators sure are slick and I’m betting the Last Best Beef wishes it had a beef with any other State besides Montana!

Instead of federally registering and enforcing its rights in Montana’s slogan, THE LAST BEST PLACE, in 2005 Montana Senators Conrad Burns and Max Baucus got Congress to pass a law prohibiting the use of “federal funds” for trademark registration of the term during the following fiscal year.  Never mind that the USPTO is a fully user-fee funded agency.  This provision was included in an appropriations bill to prevent any funds that the government allocates to the PTO — as in all of its user fees — from being used to register THE LAST BEST PLACE.

This annual tradition continued until this past Friday, when the PTO announced (somewhere other than here on its announcement page) that it will honor the Baucus legislation and permanently deny any trademark application for THE LAST BEST PLACE, according to a post on KXLH.com.  When you think about it, why should the Last Best Place have to play by the rules when playing by the rules would put it in last place for protecting its State slogan at the PTO?!?  But that’s not where this story begins.

This tale actually began as a group of tales.

The Last Best Place came about in 1988 as an anthology in which the Montana Historical Society owns the copyright (registration here).  But that copyright protects the book text only.  So what about the book title? Well, titles of a single works are not protectable under intellectual property law.  Clearly not inventions, titles are prevented from having patent protection.  Titles also are precluded from protection under copyright, and there’s a rule against treating titles of a single work as trademarks.  How then can the Grand State of Montana prevent others from registering THE LAST BEST PLACE?

Well, the Montana State Department of Commerce (“the Department”) filed two trademark Oppositions (here and here) to prevent a Nevada company named The Last Best Beef from registering THE LAST BEST PLACE for retail stores & real estate brokerage services  and real estate development services.  Between 2001 & 2004, Last Best Beef also applied to register THE LAST BEST PLACE for kitchenware, clothing, travel info, hotel & restaurant services, and jewelry, blankets & more apparel.  According to the Oppositions:

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The phrase “The Last Best Place” has become synonymous with the State of Montana since the term was used as the title of an anthology of Montana writers, which was published in 1988.  Since the publication of the anthology The Last Best Place, the phrase “The Last Best Place” has been used innumerable times by the Department, as well as by other Montana State agencies and the public, to describe the State of Montana and the many attractions it has to offer, and to promote the State of Montana as a travel destination and as an attractive place to locate a business or residence.

As a result of the extensive use of the term “The Last Best Place” to describe the State of Montana by the Department, other agencies of the State of Montana and the public over the past seventeen (17) years, the term “The Last Best Place” has become an accepted nickname for the State of Montana, and the geographically descriptive significance of this term would be readily apparent to a meaningful segment of the relevant public.  Accordingly, the term “The Last Best Place” is primarily geographically descriptive [under the relevant section of the U.S. Trademark Act].

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In other (and fewer) words, LAST BEST PLACE describes Montana, therefore it cannot be protected through federal trademark registration.  Descriptive terms do not function as brands and are not protectable as trademarks, as I discuss here.  By arguing descriptiveness instead of trademark infringement and/or dilution, the State of Montana limited its range of options for preventing others from registering THE LAST BEST PLACE.  Or did it?

Other federally registered LAST BEST marks include: THE LAST BEST BED for lodging services; MONTANA MASTER CHEFS THE LAST BEST FOOD & WINE FESTIVAL GREENOUGH, MONTANA & design for festivals; THE LAST BEST BEEF for beef, and THE LAST BEST WATER for bottled water.  They are all owned by . . . can you guess?  Yep!  Last Best Beef!  But Montana seemed unconcerned with these similar marks.  Rather, it focused its sights on THE LAST BEST PLACE.

Instead of gun-slinging with the Nevadans at the TTAB, Montana lassoed THE LAST BEST PLACE for itself by slipping Section 206 into the 2006 Science, State, Justice, Commerce and related Agencies Appropriations Act: “Notwithstanding any other provision of this Act, no funds appropriated under this Act shall be used to register, issue, transfer, or enforce any trademark of the phrase ‘Last Best Place.'”  As a result, the USPTO suspended both trademark Oppositions and all of Last Best Beef’s pending trademark registration applications for LAST BEST PLACE.

All fired up, Last Best Beef set out for blood, seeking to skewer the PTO.  It filed a lawsuit against U.S. Government officials Jon Dudas and Lynne Beresford in order to prevent the PTO from adhering to the federal legislation.  Initially, the district court agreed, finding Section 206 to be an improper end run around the Lanham Act (my thoughts exactly!) and granting summary judgment to Last Best Beef on September 27, 2007.  But that did not extinguish the dispute.

The Commissioner appealed, and exactly one year and one day later, the parties argued before the Fourth Circuit Court of Appeals.  About a month after that, the Fourth Circuit overturned the District Court’s summary judgment ruling and sent the case back down for reconsideration.  On February 2, 2008 the District Court not only vacated its summary judgment ruling, it did a 180 by dismissing Last Best Beef’s complaint.  Last Best Beef asked the court to reconsider, which it politely did.  On March 25, 2008, the District Court ordered both parties to file new cross motions for summary judgment on the constitutional issues in the case.  On June 17, 2008 the court sided with the Government, granting its summary motion, ending the case for good.  John Welch, Master of the TTABlog daily news source covered the dispute as it was happening on February 2006, April 2006, October, 2007 and even into February 2009, when Baucus filed the fifth annual appropriation bill preventing the PTO from using funds to register LAST BEST PLACE marks.

After seven years of annual legislation preventing the PTO from registering LAST BEST PLACE, the PTO finally agreed on Friday May 4, 2012, to give LAST BEST PLACE Super Status, under which no registration to federally register any THE LAST BEST PLACE mark will be allowed (including this otherwise incontestable registration for LAST BEST PLACE for mail order services featuring products from Montana.)

As the ever-so-wise Daniel Kegan pointed out to me on Carl Oppedahl’s invaluable e-trademarks listserv, this is not the first time Congress granted exclusive trademark rights.  Several laws already exist (here) granting exclusive rights to use certain trademarks and other designations, including: RED CROSS (since 1948); SMOKEY BEAR (since 1952); WOODSY OWL (since 1974); and Uniform of friendly nations (since 1948), among others.  Kegan authored an extensive article on this and other political trademarks in 2004, as of which time he says there were approximately 70 such marks.

There are 49 other states and a few U.S. territories that each have one or more slogan, as seen in this list of state slogans from Wikipedia.  Many (most?) have protected their state slogans through traditional means of trademark registration, like Alaska (BEYOND YOUR DREAMS. WITHIN YOUR REACH.), Arkansas (THE NATURAL STATE), Arizona (GRAND CANYON STATE) . . . need I continue?  Of the states in the Fourth Circuit (Maryland, Virginia, North Carolina, South Carolina & West Virginia), all but North Carolina have their State slogan federally registered: Maryland (MARYLAND OF OPPORTUNITY); Virginia (VIRGINIA IS FOR LOVERS); South Carolina (SMILING FACES. BEAUTIFUL PLACES.) and West Virginia (WILD & WONDERFUL) all took this step to prevent infringement.  Montana, on the other hand, won’t be able to pursue infringers as it has admitted LAST BEST PLACE is not a mark and thus cannot be infringed.

I doubt that we’ll see this happen too often, since the legislative protection eliminates any remedy for trademark infringement.  Nonetheless, for states (or even well connected companies) that merely want to prevent registration of a term, Montana has shown that the appropriations bill is one way to do it.