Why would a county trademark a slogan?
Some have been asking that question since Nassau County filed a trademark application with the U.S. Patent & Trademark Office for “Nassau County: Golden Coast to Coast.” While the application process’ $5,000 price tag has raised some eyebrows, the truth is that Nassau County is following a brand strategy that could bring in significant revenue for years to come.
Trademarks are rooted in commerce. They are different than patents and copyrights in this respect. Those latter two are enshrined in Article I of the United States Constitution – which gives the U.S. Congress the power to “promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” – but trademarks do not enjoy such lofty language.
Rather, they fall under Congress’ power to regulate interstate commerce. A trademark registration is only granted when the mark is used in interstate commerce – and once commercial use ends, so does the protection.
The Nassau County application is for the service of promoting recreation, tourism, business and conventions in the county. Yes, there is commercial value in bringing more tourists and businesses to New York, but that’s not where the revenue stream ends.
The real money is in licensing the trademark and enforcement against infringers. This is only possible if the slogan sticks and others actually want to use it.
Think of the iconic slogan “I (HEART) NY.” There’s a good reason why the trademark owner is the New York State Department of Economic Development: The slogan brings in millions in licensing fees for the state, and it’s easy money. Licensees do all the work and pay the state a percentage of their sales for the right to use the slogan on their products.
The state makes no secret of the fact that it licenses the mark (there’s a section exclusively for licensees on the iloveny.com website). What began as a slogan to promote tourism now graces everything from keychains to shot glasses – and it’s managed by a worldwide licensing agency.
Trademark owners are obligated to police uses of their mark or risk losing protection, and enforcement takes more work. But it’s still a major revenue generator.
Most people don’t realize the logo is a protected trademark, so it’s widely used without permission or the proper licensing. In response, the Department of Economic Development sends out hundreds of cease-and-desist letters every year. Those on the receiving end don’t simply stop using the logo; they usually pay a fee to settle the matter, and those fees add up – far outweighing the cost of securing a trademark registration.
The real work for Nassau County isn’t securing the trademark registration. It’s building brand awareness for the new slogan. That will require investment in advertising and consistent use of the trademark.
If done right, it will also attract licensees and infringers – both necessary for the slogan to become a cash cow for the county.
Allison Singh is of counsel and a member of the Corporate and Intellectual Property groups at Twomey, Latham, Shea, Kelley, Dubin & Quartararo LLP.
