Trademarking a City Slogan to Enhance Economic Development
What’s in a name? Or, in a city slogan, for that matter? A city may adopt a slogan to boost civic morale, encourage economic development and increase tourism dollars. Further, a city may opt to trademark a slogan to protect its brand from dilution or imitation.
Some slogans are unofficial, such as “the city that never sleeps,” while others are coined for official promotion by a government agency, such as the trademarked “what happens in Vegas stays in Vegas.” If your city has something to offer besides surreptitious tourism, then highlighting that strength in a trademarked slogan could raise the profile of your locale and by extension, increase the tax base.
Indeed, there is a category designated by the U.S. Patent and Trademark Office for just that purpose: “Promoting economic development in the {specify state of, county of, country of followed by geographic designation, e.g. state of Maine}.”
Adopting a trademarked slogan should not be undertaken on a whim because of the legal process; attempting to trademark a placeholder slogan would then result in it being abandoned. The U.S. Patent and Trademark Office calls for a Statement of Use to be filed within six months that includes a sworn statement that the mark is indeed being used in commerce.
So, what can be trademarked? The USPTO, in a guidebook for the application process, states that a “trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”
It is crucial to select a slogan that is truly unique. For starters, if the wording is already trademarked for similar goods and services, your city should drop that idea. Moreover, the USPTO considers if the phrasing is something that can really be protected as a mark. The agency recommends considering “how difficult it will be to protect your mark based on the strength of the mark selected.” Also, the USPTO only registers marks, but it is the mark owner that is responsible for enforcement.
Now, how should a prospective mark owner create a mark that is easier to protect? Avoid merely descriptive phrases, say, for example, “attorney at law.” Or, using a USPTO example, “World’s Best Bagels” for bagels. Instead, it is recommended you use something unique.
“The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive. Fanciful marks are invented words with no dictionary or other known meaning. Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected,” the USPTO guidance says. “Fanciful and arbitrary marks are registrable and, indeed, are more likely to get registered than are descriptive marks. Moreover, because these types of marks are creative and unusual, it is less likely that others are using them.”
Recall the example of “the city that never sleeps,” which is usually associated with New York City and was the title of two different movies, including one set in Chicago. A unique take derived from the phrasing could work, such as this trademark: “the dry cleaner that never sleeps for the city that never sleeps,” a mark that is catchy, but was abandoned.
The objective for a city’s trademarked slogan is to capture something unique for a lasting purpose. Of course, a trademark can take on a broader meaning and have staying power. The Texas Department of Transportation has a trademarked slogan originally meant to deter littering on highways. You may have heard of this one: “Don’t Mess with Texas.”
Please do not rely on this article as legal advice. We can tell you what the law is, but until we know the facts of your given situation, we cannot provide legal guidance. This website is for informational purposes and not for the purposes of providing legal advice. Information about our municipal and governmental law practice can be found here.
