By: Phillips Nizer Partners: Alan Behr, Charles LaPolla, Andrew Tunick and Intern: Yann Rimm
Those of you who remember New York City from the late 1970s do not need anyone to tell you that the City has changed drastically since then. Back when New York City experienced its all-time high crime rate that helped frighten away tourism (and residents), the City desperately needed help. Overheated municipal spending in prior years and other factors led to serious financial problems. In 1975, President Gerald Ford denied the federal assistance requested in order to stave off a potential filing by the city for bankruptcy. Two years later came one of several power blackouts to strike the city, but this one created opportunity for massive looting that resulted in 4,500 arrests.
At about that moment, however, the New York State Department of Economic Development (NYSDED) began its program to make the City more desirable as a place to live, work and visit. And that is how the I ❤ NY logo mark was born. It was designed for free by Milton Glaser, the graphic designer already famous for a Bob Dylan poster and many other works. He was recruited by William S. Doyle, the deputy commissioner of the New York State Department of Commerce. The design was an immediate success, helping keep the campaign going far longer than what was initially anticipated to be a duration of only a few months. Using a reference to New York City as the “Big Apple” dating from the 1920s, the New York Convention and Visitors Bureau, as it was then known, began again promoting the city as the “Big Apple”—and the revived nickname stuck.
By the time that the COVID-19 pandemic had disrupted travel everywhere, New York City had become the most-visited city in the United States and the eighth most visited in the world. According to NBC News, the Big Apple is also the world’s most photographed city.
Perhaps because the individual elements of the Glaser logo are common, it is a frequent misconception that the Glaser logo is in the public domain. However, the overall logo mark was in fact registered in 1989 by the NYSDED as a service mark in Class 35 for, “promoting the state of New York as a tourist attraction and enhancing its economic development.” But that has not stopped a large trade in knockoffs, even within major tourist centers in Manhattan.
There is some indication in media articles that NYSDED was lax in the past about preventing uses by others of the “I❤NY” logo mark. However, in recent years, the NYSDED has sent about two hundred cease-and-desist letters annually. Many of the alleged infringers claim to have not been aware that they were using a registered mark. In 2009, a coffeeshop owner who had “I [coffee cup] NY” tattooed onto his hand reproduced the image from the tattoo on his storefront. That earned him a cease-and-desist letter from the NYSDED, an action which is indicative of the aggressiveness with which the NYSDED has recently policed the marketplace in an effort to prevent what it believes are infringements of its logo. The NYSDED has also opposed several trademark applications by entities applying for the “I❤” symbol in combination with other place names such as Santa Barbara, San Francisco, New Orleans and New Jersey—to name a few.
Those accused of infringing the I❤NY logo may ask if it should remain a registered trademark or if it is now diluted to the point where it has lost its distinctiveness. On the other hand, in at least one trademark opposition proceeding, NYSDED has taken the position that the mark has become famous as a result of long-term exclusive use, advertising and promotion. If this position is upheld, it would help to blunt any claim that the “I❤NY” logo mark cannot be enforced against others who use “I❤” formative marks for goods or services unrelated to those for which NYSDED uses its logo mark. In such event, NYSDED could assert that another party’s mark dilutes the distinctiveness of the “I❤NY” logo and prevent others from using or applying for a similar mark even if the use of the other party’s mark has nothing to do with promoting tourism.
Although there is no doubt that the “I❤NY” logo has been widely exposed to the public, the question of its distinctiveness is nuanced: a mark is distinctive when the public readily accepts it as identifying a particular source.
In its notices of opposition against other “I❤” trademark applications, NYSDED has stated that I❤NY is synonymous with New York State. However, an issue remains whether a survey would support a claim that most people associate the logo with a single source of goods and services or simply as an expression of love for New York by the user of the logo.
Interestingly, the French have addressed an effort to register and claim exclusivity with respect to the designation I❤Paris. A French trademark registration for this designation was obtained by the company France Trading, which used the registration as the basis for opposing an application by Paris Wear Diffusion for the mark Paris Je t’❤ (which translates literally as Paris I❤you) for T-shirts. In its response, the applicant challenged the validity of the opposer’s registered mark as being generic and non-distinctive, and the Paris Court of Appeals agreed. The case ultimately made it to the highest French court, the Cour de cassation, where the opposer argued that the use of I❤Paris on the T-shirts was distinct enough because the T-shirts were labeled as products of France Trading. However, the court found that argument to be insufficient because the identifiers on the T-shirts did not readily identify the source at first glance. In other words, under the reasoning of the court, if the owner needed a label stating the source of the product to justify its distinctiveness, the logo did not fulfill the very purpose of trademark registration.
The reasoning of the French court is clearly not consistent with U.S. trademark law which authorizes the source of the goods and services to be unknown or anonymous. It is, however, consistent regarding its reluctance to protect merely ornamental marks. In particular, the French court noted that the targeted clientele of the I❤Paris T-shirts were mostly tourists visiting Paris and that when customers buy these clothing articles, they do not think, “Hey, look at me I am wearing an authentic France Trading” shirt but rather, “Hey, look: I made it to Paris.” The French court therefore found that “the average consumer will not perceive the logo as identifying a source but merely as decoration.” This finding is consistent with EU case law (see, Windsurfing v Boots, CJEU May 4th 1999, where the Court found that the name of a geographic location can be registered as a trademark so long as the public associates the mark with the owner and not the place) according to which, even if a mark looks worthy of registration on paper, it is ultimately the public perception that matters whether it can be protected as a trademark.
The chances of the same outcome ever happening in the United States with respect to NYSDED’s “I❤NY” logo mark is probably low considering its strong presumption of validity stemming from its registrations as well as NYSDED’s strong case for acquired distinctiveness. As a result, we can all continue to ❤ New York—within the limits of the law, of course.