Did you know buildings can be trademarks? They can, and the Empire State Building fights very hard to protect its look.
ESRT Empire State Building, L.L.C. (“ESRT”) is the listed owner of various Empire State Building related marks, including the phrase EMPIRE STATE BUILDING itself registered in 1999 as well as multiple variations of the Empire State Building’s silhouette registered over the last 20 years.
Gotham City Crew is a New York Jets fan club (sorry, for all the pain there guys), that distributes merchandise bearing the logo that can be seen to the right. The Crew filed two registrations in July 2017: one for the word mark GOTHAM CITY CREW and one for the design mark of the GOTHAM CITY CREW logo. Both marks were filed for use in baseball caps and related clothing. The design mark features a silhouette that resembles the New York City skyline. The mark is dominated by a shape which appears to be the Empire State Building.
Unfortunately for Gotham City Crew, ESRT is not apprehensive about defending its family of Empire State Building marks. While ESRT took up no problem with the word mark GOTHAM CITY CREW alone, it filed its opposition against registration of the GOTHAM CITY CREW design mark on March 22, 2018.
ESRT cited various grounds for its opposition, including priority and likelihood of confusion, dilution by blurring, and false suggestion of a connection with persons, living or dead, institutions, beliefs or national symbols.
At first glance, it may be difficult to determine whether ESRT has the right to capitalize on the use of the Empire State Building’s design. After all, it seems reasonable to assume that anyone should be able to use a national monument in a mark, right? Nope.
A look at the prior oppositions filed by ESRT presents an interesting history. Historically, in cases where registrants have utilized the Empire State Building in their mark, ESRT has been known to request an extension of time to file an opposition. In most cases, it has not proceeded further and the mark ends up registered regardless. Design marks that utilize the Empire State Building, therefore, are still in existence and have been successfully registered with the USPTO.
ESRT has not always missed the target, when it comes to protecting the design of the Empire State Building. For example, ESRT initially filed an opposition to the NYC BEER LAGER design mark in 2012. After much deliberation spanning over the length of five years, the USPTO refused registration of the mark in 2017. The Board held that if the NYC BEER LAGER design was registered, dilution of the famous mark (such as the Empire State Building) by blurring would be present a danger to ESRT. Consumers, upon seeing the newer mark, would automatically be reminded of the original, famous mark (the Empire State Building) regardless of whether there was any actual confusion as to the source of the goods bearing the mark itself. The dilution in question, subsequently, would deplete the distinctness of the famous mark. Because the Empire State Building was such a well-known, distinctive, famous mark and the NYC BEER LAGER design mark was confusingly similar, the Board refused registration.
Unsurprisingly, this isn’t the only trouble Gotham City Crew is facing over its application for the GOTHAM CITY CREW mark. DC Comics was granted an extension of time to file its own opposition against registration of both GOTHAM CITY CREW marks in February. Presumably, it is planning to argue that it has a superior right to use of the GOTHAM mark.
It is unlikely that Gotham City Crew is going to be able to register either one of its design or word marks, especially with both ESRT and DC Comics coming after it to protect their most treasured intellectual properties. But a case like this begs the question – is it reasonable for a monumental mark such as the Empire State Building to be owned by a single entity?
Author, Caroline Womack, is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.