New York is not shy when it comes to protecting its world-famous “I ♥ NY®” trademark. In its most recent attempt to enforce its rights in the mark, the Empire State Department of Economic Development had its enforcement agency send a letter to the owners of Everyman Espresso, a New York City coffee shop, demanding that they cease use of the logo. Part of the Everyman Espresso logo plays off of the iconic New York trademark by substituting a coffee cup for the heart.
The letter claimed that, “Everyman Espresso’s unauthorized and confusingly similar use of the I ♥ NY® logo” violated federal trademark law and implied “a misleading designation of source, origin, endorsement, sponsorship or approval by the New York State Department of Economic Development of your merchandise.”
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Rather than risk costly litigation, Everyman decided to cease all use of the mark. But that wasn’t enough for New York. The state wanted compensation, and its lawyer demanded that Everyman provide an accounting of gross revenues generated during the period when the I ♥ NY trademark was used, to help set the appropriate penalty. Everyman is complying with the request, but is not pleased about it, and has been quoted as saying, “Basically, it’s extortion.”
Many lawyers would argue that the Everyman logo is not infringing, causes no likelihood of confusion and does not dilute the state’s mark. However, it is unlikely that New York will ever slow down its efforts to keep third parties from using its signature mark, no matter how much they vary it. Last year alone, more than 100 letters went out to alleged infringers.
For third parties thinking of developing a mark which plays off of “I ♥ NY,” it’s best to think twice. As the Everyman case demonstrates, defending against a strong trademark owner with such a robust enforcement policy is more of a challenge than a typical small business would likely want to take on.