This post examines how the Halo Effect leads to faulty registrations.
Marks That Violate TMEP
Verily, there are registrations on the books that blatantly contradict case law cited in TMEP.
Just so it’s fresh in your mind, here’s that quote from Tammy TMEP again:
…the informational significance of I ♥ DC was “reinforced by the fact that similar expressions in the form of ‘I ♥__’ have also been widely used to express such enthusiasms with respect to other places and things
TMEP 1202.04(b) Widely Used Messages
Read that quote again.
And again.
And then notice this list of registrations held by the New York State Department of Economic Development. (Note that the “heart” symbol is omitted in the word mark. Trust me, each of these marks says “I ♥ NY.”)
Now, some of these might be legit trademarks. Remember, trademark law is fact-specific. Just because a term is unregistrable in one class, doesn’t make it unregistrable in every class.
“Apple” works for computers, but wouldn’t be good for a fruit stand. Ditto for “Banana” and tires. So surely some of those “I ♥ NY” trademarks are in classes that “work” for using it as a registered trademark.
But now enjoy this list of NINE “I ♥ __” trademarks, all registered in classes typically used for novelty goods. These are all active as of May 15, 2020. (Just for fun, I included two marks that are dead. See if you can find them!)
This is an embedded excerpt view of an Airtable database of questionable trademark registrations. (I created it with the help of many creatives who were impacted by marks listed in it.) In case it doesn’t properly display, here are the Serial Numbers so you can look them up yourself:
- 73758742 (“I LOVE NY” w/pinstripes heart – Clothing)
- 76015092 (“I LOVE NY” w/pinstripes heart – Tote bags, traveling bags, umbrellas, more)
- 77447171 (“I LOVE NY” w/green heart- Tote bags, traveling bags, umbrellas, more)
- 77447212 (“I LOVE NY” w/green heart – Clothing)
- 78614517 (“I LOVE NY” w/red heart – Books, journals, stationery, more)
- 85372728 (“I LOVE NY” w/rainbow heart – Clothing)
- 85372751 (“I LOVE NY” w/rainbow heart – Decals, bumper stickers)
- 85570456 (“I LOVE NY” w/black heart – Stationery, pet apparel, more)
- 85741331 (“I LOVE NY” w/blue heart – Key chains, magnets)
The entire Airtable lists over 500 registered trademarks that – to common-sense, ear, and eye – appear to be mere T-shirt slogans. Stuff like “FEED ME TACOS” and “GETTING MEOWIED” (cat lover weddings, Y’all).
I wish I was making this up!
Seriously.
Maybe you think the “I ♥ NY” marks are radically different than “I ♥ DC”?
Um, okay.
Take a closer look. Here’s one:
And here’s the other:
And here they are, side by side with one of the “I ♥ NY” marks (just in case the Airtable view above didn’t display for you):
The court ruled that “I ♥ DC” fails to function as a source indicator, and issued its decision as a PRECEDENT. (Legalese for “Ya’ll can’t be trademarkin’ this now, ya hear? And don’t be trying to trademark somethin’ jes like it, neither!”)
Yet that’s exactly what “somebody” did.
Those nine “I LOVE NY” registrations listed above are in a variety of novelty classes. The various “marks” decorate stationery, T-shirts, plush toys, umbrellas, you name it. Anything a tourist might want for a souvenir, the New York State Department of Economic Development has gotcha covered.
These trademarks are identical in form and function to the “I ♥ DC” mark that the Trademark Trial and Appeal Board used as a precedent to establish failure to function for merely informational matter.
Hmm.
This is the halo effect in action, y’all.
Besides the nine registered marks in novelty classes, “I ♥ NY” is also registered in a variety of other classes that might be valid, or maybe not. That’s another can of worms to explore. But I’m not interested in those worms today.
What matters is, the distinctiveness doctrine of trademark law is often ignored when it comes to print on demand. If a valid mark is registered in one class, it’s much easier to get the same phrase registered in other classes, even if it clearly violates the precedent.
So who’s allowed to sell novelty goods decorated with “I ♥ NY”? Only the New York State Department of Economic Development. All others must pay a licensing fee.
You see how it is.
This is Part 10c of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 11. Or see below for a complete list: