The love of New York has prevailed over Santa Barbara.
After aggressively fending off several businesses’ attempts to receive trademark protections for marks similar to the iconic “I♥NY” brand, Empire State Development Corp. appears to have given a little last month in its protectionist campaign.
The legal wrangling comes as ESDC is preparing to reinvent its famous brand, which has emblazoned everything from T-shirts to teddy bears.
In early April, ESDC settled a federal trademark infringement lawsuit it had brought against a company called I Love Santa Barbara, Inc.
Over the last three years, that firm had registered two “I♥SB” marks with the U.S. Patent and trademark Office.
The settlement in U.S. District Court in Albany prohibits the Santa Barbara, Calif., firm from using its marks on physical products. It also cannot use them in targeting consumers outside the West Coast, according to ESDC spokesman Warner Johnston.
Johnston said the state agency is not allowing I Love Santa Barbara to continue to use the marks, but they are still featured on its Web site, ILoveSB.com.
Company owner Stephen Gaither declined to comment on the terms of the settlement, but he said, “We’re not going to show up in their backyard.”
“They agreed to back off,” said Gaither, who runs a tourism firm in Santa Barbara.
However, ESDC is not backing away from all trademark application challenges. Over the last four years, ESDC has succeeded in blocking trademark applications for heart-based marks for San Francisco, North Carolina, New Jersey and yoga.
On Friday, the Oak Brook, Ill.-based Cherle Communications abandoned its four-year effort to register “I♥Las Vegas” with the Trademark Office.
As with most of the marks centered around a heart, ESDC said Cherle would cause confusion about the sponsor of products bearing the “I♥Las Vegas” marks. It would also allegedly dilute the value of the “I♥NY” mark.
Cherle planned to plaster mugs, margarita glasses and other items with the mark it sought.
Since 1977, ESDC has used the “I♥NY” mark to promote tourism and economic development. Later this spring, ESDC, with the help of the New York advertising agency Saatchi & Saatchi, will unveil a redesigned “I Love New York” brand.
In March, ESDC Chief Marketing Officer Thomas Ranese said his agency will “reinvigorate” the brand in a way that will better reflect the entire state and not just New York City.
“We take trademark infringements seriously,” Johnston said in an e-mail. “We have stepped up our protection of the brand as we get ready to relaunch the next campaign. It generates real economic value for New York state and needs to be protected as an asset.”
ESDC filed the federal suit against Gaither’s company three months after the Trademark Trial and Appeal Board in October dismissed a challenge against I Love Santa Barbara, saying the state agency failed to prove ownership of its marks.
Gaither, who launched his business in 2002, said in December that ESDC was using costly legal challenges to pressure him into abandoning his marks.
His attorney said people would not confuse the New York and Santa Barbara marks because they concern two different locations.
Three months before ESDC filed the Santa Barbara suit, a Raleigh, N.C. firm called Mosayk dropped its bid to register “I♥NC.”
At least one ESDC heart-based challenge is pending at the Trademark Office. That case involves Ramapo Valley Brewery’s application to register “I♥NY Beer.” A call to the Rockland County brewery’s lawyer was not immediately returned Monday.