When is a trademark not a trademark? When it no longer performs the source identification function for which it was adopted. In a recent decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, the Board cancelled the trademark registration (and refused a currently pending application) for the logo “I♥DC” covering various merchandise ranging from clothing to tote bags to stuffed animals.
As grounds for the cancellation, the Board found that the mark no longer served its purpose of identifying the source of the goods, but instead was perceived as an expression of enthusiasm rather than a source indicator for the goods. In finding the wording no longer functioned as a trademark, the Board relied upon widespread ornamental use of the logo by third parties for a long period of time and evidence showed that consumers associated the slogan “as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.” – even despite extensive use of the slogan on product hang tags (traditional indicators of trademark use). Here the Board went so far as to recognize that many other “I ♥…” expressions also fail to function as a trademark (but instead simply imply an expression of enthusiasm).
Of course, the trademark owner did herself no favors, admitting that she did not create the design, that she was aware of other third party vendors using the slogan when she originally filed; that her rational for filing the application was to prevent copying of the products affixed (not necessarily the trademark); and when asked what the logo meant, she responded that “they love D.C” and that the customers buy the goods “to remember that they’ve been there”. All candid responses, and all overwhelming support for a finding that “I♥DC” failed to function as a trademark.
Curiously, while no love exists for I♥DC trademarks, some 200 miles up I-95, we find ourselves in an alternate universe, where I♥NY has for decades stood as the focal marketing piece and perhaps one of the most famous brands associated with the State of New York. In fact, the brand is so well known, aggressively enforced, and strategically licensed, that its owner, the New York State Department of Economic Development has its own website dedicated to the brand and licensing opportunities. What a difference!
Although the facts overwhelmingly tipped against I♥DC (and its individual owner), the decision raises questions about “I♥[insert geographic location]” trademarks generally. Don’t they all act as an “expression of enthusiasm, affection or affiliation with respect to the [insert geographic location]” – New York being no different? And apparently affixing the logo onto hang tags is not enough to show “trademark use”. So where is the line?
While the New York State Department of Economic Development may withstand challenges based on historic policing efforts, use on a wide range of goods and services, and developing an entire licensing program; owners (public and private) with smaller budgets and shorter histories likely face the same dangers and attacks as I♥DC. Police your mark, keep ornamental use to a minimum and have a documented history of how you use your mark as an indicator of source of the product, not just as a cute slogan that you love a particular city. And for those looking to enter the “I♥[insert geographic location]” branding market (whether entrepreneur or local government), check the registry, investigate your marketplace for preexisting use, and study this case for what to do (and not to do) in your use of the brand – as opportunities exist as both first adopter or simply on the coattails of prior owners failing to treat their brand as anything more than a slogan showing “enthusiasm” for the location.