We have all seen them around: NYPD hats, miniature Chicago flags, replica “Bourbon Street” signs, the “What happens in Vegas” shirts. Branding is a vital aspect of tourism in many large cities, with merchandising providing a modest income stream. But smaller local governments may also realize the benefits of distinguishing their local identity, for purposes of attracting higher-end development to encouraging shoppers to support local businesses. Consider a small-town sports team winning the state championship in Hoosiers-like fashion (Metro-Goldwyn-Mayer Studios Inc., 1986). Unfortunately, many well-intentioned branding efforts can be derailed by a failure to maximize the benefits available to municipalities under trademark law.
The primary reason to seek trademark protection for municipal logos, slogans, and other distinctive marks is to control the use of those marks. For example, the City of Crystal Lake might not want unauthorized retailers to claim that they participate in the “I Shop Crystal Lake” retail program. Registering slogans, such as Crystal Lake’s, as trademarks provides local governments a wide range of remedies against any unauthorized use of their slogan.
Both federal and Illinois law govern which municipal trappings can and cannot be trademarked. Flags and certain insignia, such as city seals, cannot be registered trademarks. Park Ridge, for example, tried unsuccessfully to restrict the unauthorized use of its official flag and seal. On the other hand, logos and badges pertaining to governmental departments (those NYPD hats) or particular services or institutions (zoos, museums, etc.) can be protected. The names of cities and villages can be used freely by the public, much to the delight of car dealerships such as Arlington KIA and Bull Valley Ford, neither of which is located in the municipality implied by the name. However, slogans, ranging from official city slogans to tourism and retail campaigns (“What happens in Vegas”) and public-service programs can be trademarked. Finally, municipal designs which do not rise to the level of official insignia can be protected. One example of this is Lincolnshire’s distinctive capital “L” design, which was registered as a trademark five years ago.
Without trademark registration, municipalities can lose control over the slogans, logos, and designs which form the “brand” of the town. It is far more difficult to prevent unauthorized use of local brands without trademark protection, and the longer a mark is used without being protected, the more it becomes the property of the public at large. Municipalities that have spent significant efforts to brand and market their communities should evaluate their distinctive marks and consider trademark registration. Of course, legal counsel is available to ensure your local government is properly and effectively benefiting from its brand.
Author: Gregory J. Barry