Traveling, Tourism, and Trademarks

Trademark Protection

A trademark is any word, name, symbol, or device, or any combination thereof, used to identify and distinguish the owner’s goods and services from those manufactured, sold, or offered by others and to indicate the source of the goods and services used in commerce. A trademark registered with the USPTO provides the owner with various rights throughout the United States and its territories, including utilizing the registration symbol ®, protecting brands from infringement, building brand goodwill, registering products with the U.S. Customs and Border Protection, and providing the opportunity to file trademarks internationally through the Madrid Protocol.

Government Trademarks and Tourism

Municipalities, regions, states, and national governments often own federally registered trademarks. These government entities obtain trademark protection for the same reasons individuals and corporate entities do: to build and protect the goods and/or services offered under their respective brands. Beyond protecting their offered goods and services, government trademarks protect the public from fraudulent individuals or entities holding themselves out as being affiliated with the government.

In addition, government trademarks can assist governments in building tourism by:

• creating a distinctive brand in the market for tourism;
• protecting a tourism region’s competitive advantage;
• promoting a country’s or region’s national culture and heritage; and
• adding a revenue stream.

When cities, regions, and governments with a strong tourism sector register for trademarks, it is generally called “destination branding,” which involves creating a unique presence in the marketplace by relying on a trademark to develop a distinctive appeal that will resonate among visitors. Destination branding can be traced back to 1986 when St. Moritz (a luxurious alpine ski resort town in Switzerland) applied to become the first geographical location in the world to be trademarked. The town still has its trademark registered with the USPTO.

The USPTO contains many registrations that exemplify a government entity promoting tourism through a trademark. Several states have followed suit and registered trademarks that are now synonymous with the state, including Virginia, Mississippi, Colorado, North Carolina, Arizona, California, and Pennsylvania.

Not only do states utilize trademarks to promote their respective tourism industries, but regions do too. For instance:

• The Finger Lakes Wine Country Tourism Marketing Association, Inc. (a nonprofit corporation) is the owner of FINGER LAKES WINE COUNTRY NEW YORK STATE for use in connection with numerous tourism promotional services.
• The Région Auvergne-Rhône-Alpes of France actually owns LA RÉGION AUVERGNE-RHÔNE-ALPES THE FRENCH VALLEY OF FOOD AND WINE at the USPTO for numerous tourism-related services, such as “[p]roviding advertising, marketing, and promotional services, namely, development of advertising campaigns in the field of tourism, gastronomy, and wine provided through cable television broadcast, web casts, radio broadcasts, newspapers, magazines, online banners, outdoor billboards, wild postings, bus and subway ads.”
• The Moosehead Lake Region Economic Development Corp. of Maine owns MOOSEHEAD LAKE MAINE for “[c]onvention and visitors bureau services, namely, promoting conventions and tourism in the Moosehead Lake region of Maine area; endorsement services, namely, promoting the goods and services of others; promoting recreation and tourism in the Moosehead Lake region of Maine.”

Countries and national territories also own trademarks to promote their respective tourism industries. For example:

• Finland owns VISIT FINLAND for numerous tourism-related services.
• The U.S. government owns a design mark that consists of a character on stilts with arms reaching out to three stars for “promoting travel and tourism in and to the U.S. Virgin Islands.”
• The Cayman Islands, a British Overseas Territory, owns CAYMAN ISLANDS GRAND CAYMAN CAYMAN BRAC LITTLE CAYMAN with a turtle dressed as a pirate between the words “Cayman Islands” for “[c]onvention and visitors bureau services, namely, promoting business and tourism in the Cayman Islands.”

Tourism trademarks provide tourist destinations the opportunity to create a distinctive identity, protect a competitive advantage, and provide additional revenue streams for the municipality, city, region, state, or national government.

Enforcing Trademark Rights

It is the trademark owner’s responsibility to police the mark and ensure that others are not using the same or confusingly similar marks for related goods or services. Otherwise, the owner runs the risk of losing brand power and the trademark rights.

As referenced earlier, the New York State Department of Economic Development owns the I ♥ NY trademark, one of the most recognizable trademarks in the world. The mark was originally created in 1976 by Milton Glaser, a designer who was tasked with creating a logo that would improve New York City’s faltering reputation and help people recapture their love of the city. Glaser designed the logo while riding in a New York taxicab using a red crayon. Glaser himself likened the logo “to a declaration of love carved into a tree trunk.”

Despite the mark’s humble origin story, it has become exceedingly valuable and is now worth millions to the state. New York State vigorously polices the mark, sending cease and desist letters to anyone who infringes on the design. It has also successfully opposed others who have applied for similar marks in connection with related or overlapping goods. For example, on July 11, 2005, Ramapo Valley Brewery, Inc., a New York corporation, filed two applications at the USPTO for I LOVE NY BEER and I ♥ NY BEER in connection with a wide array of novelty items, glassware, and clothing, among other things. On July 21, 2006, the New York State Department of Economic Development filed a notice of opposition against Ramapo’s trademark applications, alleging that the marks would cause a likelihood of confusion with its portfolio of marks and dilute the I ♥ NY brand. The Trademark Trial and Appeal Board (TTAB) sustained both oppositions, finding that New York State’s I ♥ NY marks were famous and Ramapo’s marks were likely to confuse consumers. Specifically, the TTAB noted that the goods were partly identical and the marks were so similar that consumers were likely to think that the brewery’s marks were “merely a variation of opposer’s marks used to promote New York beer.”

Cases like this show that it can be a fine line between paying homage to an existing tourism brand and infringing on someone’s existing intellectual property rights. They also demonstrate the importance of policing marks and monitoring for infringers to keep the brand strong.

Common Barriers to Registering Tourism-Related Trademarks

Since there are numerous benefits associated with having a trademark that is tied to a particular state or region, it’s no surprise that many people are interested in staking a claim. However, there are numerous potential barriers to trademark registration and several types of refusals that seem to crop up regularly around tourism-related marks.

In 2010, I LOVE DC, LLC applied for I ♥ DC at the USPTO in connection with clothing and apparel items. An opposition proceeding was brought against the mark on grounds that the mark was “incapable of distinguishing Respondent’s goods from the goods of others and therefore cannot function as a trademark and an indicator of source.” The TTAB sustained the opposition and refused registration of the mark on grounds that it was ornamental and merely informational. The TTAB reasoned that since the phrase was widely used on souvenir goods and merely conveyed “an expression of enthusiasm” for the District of Columbia, it was unable to function as a source indicator and therefore unregistrable.

In 2004, the South Carolina Department of Parks, Recreation and Tourism filed an application at the USPTO for the domain name southcarolina.com for “[c]hamber of commerce services, namely, promoting tourism in the State of South Carolina through the Internet.” The mark was refused on two grounds. First, although a preliminary refusal, the examining attorney argued that the mark failed to function as a service mark because it consisted of a domain name that did not separately identify the applicant’s services. The mark was also refused as geographically descriptive because it consisted of a geographically descriptive term, South Carolina, and a top-level domain name. Thus, the examining attorney argued that southcarolina.com would refer to a place the public generally knows, South Carolina, and the public would likely believe that the offered tourism services originated from South Carolina. The refusal was upheld after the applicant submitted arguments against both refusals.

In 2018, the City of Doral, Florida, applied to register its municipal seal with the USPTO in connection with “promoting tourism, business, residential and commercial growth, economic development, cultural and historic attractions, and government services in Doral, Florida,” and other services. The mark was refused under section 2(b) of the Trademark Act, which “bars registration of marks that include the flag, coat of arms, or other insignia of the United States, any state or municipality of the United States, or any foreign nation.” As the examining attorney noted, any mark that falls under section 2(b) is incapable of being registered on either the principal or supplemental registers, even if the government is trying to register it.

Trademarks can be an excellent way to encourage hometown pride and tourism. However, as the examples above demonstrate, if a mark becomes too commonly used, consists of unregistrable material, or is descriptive, the mark is unlikely to be protectable or may lose any trademark rights it once had.

Conclusion

Trademarks play a critical role in bolstering the travel and tourism industry. Having a reputable and recognizable name associated with a particular location can help attract visitors, encourage commerce, and ward off infringers. More importantly, creating strong trademarks can be the impetus for building an entire brand identity around a particular destination.

So next time you visit someplace new, be on the lookout for tourism-related trademarks.