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As one of the least populated and most remote places in the country, Montana is not normally a hotbed of trademark disputes. Yet the entire state is reportedly up in arms over trademark applications for the phrase “The Last Best Place.” Emotionally, and thus politically, the citizens of Montana may have an argument against registration. But legally the state is on much weaker ground. It all started when Las Vegas businessman and Montana resort owner David Lipson filed eight intent-to-use applications to register the phrase “The Last Best Place” with the U.S. Patent and Trademark Office. The applications, filed in the name of Last Best Beef LLC, cover a range of goods and services, including real estate, hotel, restaurant, and retail-store services; travel information; catalogs; jewelry; clothing; housewares; cookware; and meat. Lipson has also purchased registrations for the marks “Last Best Place Catalog” and “Last Best Place Catalog Company & Design” from a California company. Well, it turns out that the state and people of Montana think that “The Last Best Place” has become synonymous with the state and its myths and, as such, should not become the sole property of one particular person. They assert that anyone in the state should be free to use the phrase. Their claims stem from a 1988 book titled The Last Best Place, a collection of Montana writing edited by William Kittredge and Annick Smith. The phrase caught on quickly. The state and many local businesses began using it, in one form or another, to promote the virtues of life in their Western paradise. In an effort to preserve their right to continue to use the phrase, Sen. Conrad Burns (R-Mont.) has inserted language into an appropriations bill that would prevent federal funds from being used to “register, issue, transfer, or enforce any trademark of the phrase �Last Best Place.’ ” And the Montana Department of Commerce filed a notice of opposition with the U.S. Trademark Trial and Appeal Board. Montana asked that the board refuse to register the phrase because it has become synonymous with and the “ accepted nickname” of the state and is thus primarily geographically descriptive under the Lanham Act. THINK MONTANA Section 2(e)(2) of the Lanham Act prohibits registration of a mark that is primarily geographically descriptive of the goods and services for which it is used, absent secondary meaning. A mark is primarily geographically descriptive if it is the name of a place generally known to the public and if the public would make a goods/place association — i.e., believe that the goods and services so marked originate in that place. When there is no genuine issue over a mark’s primary significance and when the place named is not obscure, a public association of goods and services with the place is ordinarily presumed. Because Lipson’s real estate and land development services obviously will be rendered in the state of Montana, the outcome of the opposition will more than likely depend upon Montana’s ability to prove that the public generally understands the phrase “Last Best Place” to refer to the state. But this could be difficult to do. Aside from consumers who actually live in Montana or the nearby states, it seems unlikely that Americans generally understand “The Last Best Place” to refer to Montana, despite the recent media coverage. The phrase is neither the official state slogan nor the official state motto, many of which have been registered by various states with the Trademark Office. The fact that the phrase was the title of a single book, which is not even a recognizable trademark use, does not necessarily make it a widely recognized reference to Montana. Indeed, an Internet search reveals that the phrase is used by many seemingly unrelated parties who have nothing to do with Montana. But even if it cannot prove that “The Last Best Place” is a recognized reference to Montana, and supposing that Burns’ provision doesn’t make it into the final bill, the controversy that Lipson has created may backfire from a business perspective. Lipson has already infuriated many consumers to whom he would like to sell his goods and services. And there will be a lot of third-party use of the phrase, some of which would undoubtedly predate his use. In short, Lipson’s planned trademark may not be the last best choice for his business.
Patrick J. Jennings is an associate in the McLean, Va., office of Pillsbury Winthrop Shaw Pittman, where he focuses on all aspects of trademark and unfair competition law.

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