PTO Sued Over "THE LAST BEST PLACE" Cancellations and Suspensions

Last Best Beef, LLC has at last taken its beef over the mark THE LAST BEST PLACE to perhaps the best place it could find: the federal courts. LBB has filed a civil action, captioned The Last Best Beef, LLC v. Jon W. Dudas and Lynne G. Beresford, against the Director of the USPTO and the Commissioner for Trademarks, charging that its constitutional rights were violated when the PTO cancelled two registrations and suspended four applications and two opposition proceedings under the purported authority of the 2006 Department of Commerce Appropriations Act.


The complaint was originally filed in the U.S. District Court for the District of Columbia, but on April 10, 2006, the action was transferred to the Eastern District of Virginia (Alexandria Division), where it now resides as Civil Action No. 1:06-cv-00399-GBL-BRP. Presumably, the USPTO will have sixty days from that date to answer the complaint. (See Rule 12(a)(3)(A), Fed. R. Civ. P.).

The State of Montana claims that the slogan THE LAST BEST PLACE has become synonymous with the State. U.S. Senator Conrad Burns of the Big Sky State managed to include a provision in the 2006 Department of Commerce appropriations bill that prohibits the use of any department funds to "register, issue, transfer or enforce any trademark of the phrase 'Last Best Place.'" Section 206, Department of Commerce and Related Agencies Appropriations Act, 2006, Pub. L. No. 109-108, 119 Stat. 2290, 22314.

President Bush signed the Act into law on November 22, 2005. Coincidentally, on that very same day the USPTO issued two registrations to The Last Best Beef, LLC. for the mark THE LAST BEST PLACE: namely, Reg. No. 3,018,188 for travel information services, and Reg. No. 3,018,189 for lodging and restaurant services. As of that date, two other applications for THE LAST BEST PLACE had been opposed by the Montana State Department of Commerce, and four applications remained pending, but with Notices of Allowance.

On January 3, 2006, the PTO cancelled the Notice of Allowances issued in the four pending application. On January 5th, the PTO cancelled the two registrations, "consistent with" Section 206 of the Appropriations Act. (see letter). On January 18th it suspended all further action regarding those four applications, as well as regarding the two cancelled registrations. And as previously reported here at the TTABlog, on January 6 the Board suspended the two pending oppositions until October 1, 2006 (the first day of the government's next fiscal year).

In its complaint, LBB alleges that the PTO's actions in cancelling the two registrations and four Notices of Allowance were illegal because the Lanham Act does not provide for such actions; LBB also contends that Section 206 is unconstitutional in that it violates the Fifth and Fourteenth Amendments.

Plaintiff LLB recognizes that Section 206 expires at the end of the federal fiscal year (September 30, 2006), but it asserts that "the damage is likely to continue as Section 206 can be extended by Congress upon the expiration of the 2006 Act.


TTABlog comment: From the PTO's point of view, under Section 206 it is prohibited from expending any funds in connection with LBB's applications and registrations, and so it apparently concluded that it must suspend all action with respect thereto. As to the two registrations that issued on November 22, 2005, the PTO perhaps believed that its expenditures in connection with issuing those two registrations (some of which expenditures presumably occurred during the 2006 fiscal year) were violative of the Act and therefore the issuance of those registrations had to be reversed (i.e., the two Registrations cancelled).

From LBB's point of view, it surely must be allowed to challenge the legality of Section 206 now, rather than have to wait until the end of this fiscal year to find out whether that provision is renewed. In any case, LBB is arguably even now being deprived of its right to registration of the subject mark.

Copyright John L. Welch 2006.