DuetsBlog Collaborations in Creativity & the Law

NY ♥ TM

Posted in Advertising, Branding, Copyrights, Dilution, Fair Use, Famous Marks, Idea Protection, Infringement, Marketing, SoapBox, Trademark Bullying, Trademarks

Last week I stopped at a local wine and beer store to pick up a bottle of wine to bring to a friend’s dinner party (but also couldn’t resist purchasing a 4-pack of Surly’s Bitter Brewer. I had never seen it before, but highly recommend it). As I walked back to my car I noticed a pile of buttons lying on the cement portion of the street light, right near the front end of my car. I picked one up and brought it home with me. Please excuse the slight discoloration, it had been raining that day (and just about every other day in Minneapolis during May, unless it was snowing).

I (heart) YN

Do you get it? Don’t worry if you don’t, it took me a second, too. And no, it’s not I ♥ Your Nose. Try sounding it out. No, not I ♥ Yen. Remember the location… Yeah! I ♥ Wine. Clever, no? I thought so.

Of course, beyond thinking it was an interesting slogan, I didn’t think much of it at the time. I knew that it was a reference, modification, wordplay, etc. of the I♥NY t-shirt. But not once, not even in the most dense and confused portion of my mind, was I under any impression that somehow the State of New York had sponsored this button.  In fact, I hadn’t ever even considered the I♥NY to be a trademark. A copyrighted image, sure. But not a trademark.

So imagine my surprise when I learned from a New York Times article, that just recently the New York State Department of Development (owner of registrations for the multiple I♥NY marks) sent a cease and desist letter to a local coffee shop regarding its use of the logo below:

A few preliminary matters: (1) Yes, Mr. Everyman really does have that tattoo on his knuckles; (2) these are clearly distinct goods/services; and (3) if you’re someone who tends to see trademark bullying everywhere you look, could you have picked a victim with a better name than Everyman? According to the New York Times, the Department has sent 1000s of letters over the years, with over a 100 last year alone. A quick review of the Trademark Trial and Appeal Board’s previous proceedings confirms the aggressive approach, with the Department opposing applications for: I♥WY; I♥NY BEER, I♥Chicago; among others.

Some interesting background: Milton Glaser, the man who designed the original the logo, did it for free. In his words it was intended to be “free” for everyone to use, to allow it to “permeate the culture.” And, as the Times points out, “After Sept. 11, when Mr. Glaser designed an “I ♥ NY More Than Ever” logo with a smudge on the heart, the state even threatened to (but did not) sue him.” Boy, really makes you ♥NY, huh?

There is a lot that can be unpacked from this story: while ornamental designs can be registered based on acquired distinctiveness, how much protection should we give such a basic, informational slogan? Do these practices qualify as trademark bullying? Would anyone really be confused as to whether New York was somehow affiliated with Wyoming, Chicago, San Francisco, Iowa City, your friend Ty, or anyone else that can claim a two letter moniker?

It’s certainly an iconic logo. And there should be some protection. But any font? Any style of heart? Images other than hearts, even in other colors? Anything with I♥_____, regardless of whether it is a state abreviation, other acronym, or even a full word? If that’s the case, would it be an infringement to sell shirts with these clever (at least to me) designs:

  
The answer is likely no. But, based on their history, that wouldn’t stop the Department from sending the seller a sternly worded letter. Perhaps the real lesson here is that with the right enforcement strategy, an owner can make their registered mark seem invincible.

For me, while the designer may have been thinking about rent rather than trademark law, I think the shirt below adequately summarizes the whole situation: