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Fourth Circuit holds law prohibiting federal registration of Montana state nickname valid
October 25, 2007

In a decision Wednesday, the Fourth Circuit reversed a district court's decision finding a portion of a 2006 law invalid. The portion, a rider attached to an appropriations bill, prohibited any trademark registrations of a nickname of the state of Montana, "The Last Best Place."

The Fourth Circuit reversed, holding that the law valid and consistent with other congressional actions over the years. As a result, the USPTO correctly complied with the law in cancelling the relevant applications and registrations.

More detail of Last Best Beef, LLC v. Dudas after the jump.This case involves the attempts of a Nevada-based company, Last Best Beef, to seek federal registration of the phrase "The Last Best Place" in connection with a variety of goods and services. This phrase, which was coined by a Montana writer in 1988 and has since become widely used as a nickname for the state of Montana. As described by the Fourth Circuit: "Like a fishing line cast a thousand miles out, the phrase became part of the Montana culture." However, it had never previously been registered with the USPTO by the writer or the State of Montana. During the pendency of the eight applications filed by Last Best Beef, President Bush signed into law the Science, State, Justice, Commerce and Related Agencies Appropriations Act of 2006 ("Appropriations Act") which applies to the United States Patent and Trademark Office ("USPTO") and provides: "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 'The Last Best Place." Interestingly on that very same day, but before the USPTO became aware of the law, two of Last Best Beef's applications were registered. Upon learning about the law, the USPTO cancelled the two registrations and suspended all action on each of the remaining applications. Shortly thereafter, Last Best Beef filed a complaint contending, among other things, that the statute improperly circumvented the federal trademark law statute, the Lanham Act, and therefore the actions taken by the USPTO under the Appropriations Act were unlawful. The district court agreed and declared the Appropriations Act "invalid legislation" because this phrase was not already included in the list of exceptions to registration provided in the Lanham Act. The Fourth Circuit disagreed, finding that in fashioning the Appropriations Act, Congress simply set forth an exception to the Lanham Act's general rule that trademark registration may not be refused on the basis of the nature of the mark. In support of its decision, the Fourth Circuit noted that Congress has often prohibited the general registration of specific trademarks, such as "Smokey Bear" (18 U.S.C. § 711), marks associated with the Girl Scouts of America (36 U.S.C. § 80305), "Little League" and "Little Leaguer" (36 U.S.C. § 130506); and "United States Olympic Committee" (36 U.S.C. § 220506(a)). In the end, the Fourth Circuit held that there is no per se rule which prohibits Congress from amending or suspending prior legislation through appropriation riders, and reversed the district court's conclusion to the contrary. Congress acted unambiguously, and therefore Last Best Beef was barred from obtaining its registrations.Interestingly, the ban on registering "The Last Best Place" currently expires on November 16 absent further Congressional action. To read the full decision in Last Best Beef, LLC v. Dudas, click here.

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