Using Trademarks as a Tool to Boost Local Economic Development Through Place Branding
The information contained in this article is not intended as legal advice and may no longer be accurate due to changes in the law. Consult NHMA's legal services or your municipal attorney.
Last fall when Amazon announced that it would build a second headquarters somewhere in North America, the competitive process led to a stampede by state and local governments submitting proposals touting what made their location the best choice. The promise of 50,000 new jobs and spending more than $5 billion sparked fierce competition. Even New Hampshire presented a bid, submitted by Governor Chris Sununu’s administration. New Hampshire’s proposal positioned it as the anti-Boston and spelled out in bold in all caps, “ALL THE BENEFITS OF BOSTON WITHOUT ALL THE HEADACHES”. Ultimately, New Hampshire did not make the shortlist of finalists. Boston, however, remains in contention.
The Amazon experience highlights how important it is for local economic development strategies to focus on branding as a way to facilitate economic growth not only to attract tourists but also to draw businesses. As towns face increased competition for business investment and tourism dollars they have begun to create and promote municipal branding initiatives, also known as place branding or destination marketing, to communicate what that location has to offer and to distinguish it from other destinations.
Many municipalities have developed logos or slogans to promote their unique identity. Perhaps the best-known example of place branding is the “I (Heart) New York” logo, which was created and first used in 1977 to promote New York City. It has become iconic and famous around the world. Other famous municipal brands include the slogans “What Happen in Vegas Stays in Vegas”, and “Hershey the Sweetest Place on Earth.”
According to the New Hampshire Travel Council, tourism is New Hampshire’s second largest industry, with more than 39 million visitors spending over $5.5 billion in the state annually, generating over $315 million in Rooms and Meals Tax revenue.
The purpose behind adopting a place branding strategy is to stimulate local economic growth by attracting business, investment, residents, and tourists. Typically characterized by a logo or slogan, place branding is a tool, which a town can use to emphasize what sets it apart from other destinations as a great place to do business, live, visit and work.
The cornerstone in developing and exploiting a brand are trademarks. A trademark can be any word, name, symbol, slogan, design, or any combination thereof, used in commerce to identify and distinguish a specific product or service. A service mark is the same as a trademark, except that it identifies and distinguishes the source of services rather than goods. For example, Whopper is a trademark for a hamburger, while Burger King is a service mark for restaurant services. Throughout this article, the term trademark refers to both trademarks and service marks.
A trademark is legal protection of a brand, which protects those aspects of a brand that are unique and specific. A good trademark will distinguish the attributes of a community and draw attention to the authenticity, culture and history of that location.
There are three ways in which municipalities can establish trademark rights in their brands: (i) acquiring common law trademark rights by using the trademark in connection with their goods/services in commerce; (ii) registering the trademark at the state level with the Secretary of State; and (iii) registering the trademark at the federal level with the United States Patent and Trademark Office (USPTO).
A common law trademark provides protection for trademarks that have not been registered federally with the USPTO or under state law. Common law trademark rights are automatically granted and based on first use, they are limited to the geographic area where the trademark is used, and can only use the ™ symbol. A state trademark registration provides protection for a trademark within the state in which it is registered and those rights are limited to that specific state. A state trademark does not provide the same level of protection as a federal trademark and can only use the ™ symbol.
The most effective way to ensure that a municipality’s brand is protected and that others are unable to copy it is through federal trademark registration with the USPTO. Some of the advantages of a federal trademark registration include: (i) the exclusive right to use the trademark nationwide on or in connection with the goods/services listed in the registration; (ii) the right to file a trademark infringement lawsuit in federal court and obtain monetary remedies; (iii) barring registration of other confusingly similar trademarks; and (iv) the right to use the registered trademark symbol: ®.
It is important to note that prior to adopting and developing a new logo or slogan for your municipality, whether choosing to develop a brand without ever seeking federal or state trademark protection, it is critical to ensure that the new logo or slogan does not infringe on the rights of any third party. A trademark does not need to be identical to another to infringe that trademark. The standard is “confusingly similar,” which consists of multiple factors.
Another consideration in developing a municipal branding strategy is the limitations on trademark registration for municipalities. For example, under both New Hampshire and federal law, registration of a trademark that consists of a city seal, coat of arms, or flag is prohibited (See 15 U.S.C. § 1502(b) and RSA 350-A:2).
Furthermore, geographic names are ineligible for federal trademark registration. The reasoning for this is that allowing exclusive appropriation of a geographic name creates a monopoly on that name and precludes others from using it. Therefore, by precluding federal registration of a geographic name, any business operating in or near the area can use that name without infringing a trademark. However, while the name of a municipality cannot be trademarked alone, it can be as part of a design, logo or slogan.
Municipalities can create brands without including official seals or flags, for example, a municipality often has trademark rights in the badges, shields and insignias of its police and fire departments.
Municipalities can also create a brand and capture what makes their town appealing and unique through a combination of visuals and words. For example, municipalities can communicate this through departments, events, festivals, logos, mottos, name plus design/logo, slogans, taglines, or other interesting indicia.
In addition to developing a brand, municipalities must consider the many ways to reach consumers, including having a social media presence on multiple platforms and a responsive website.
Every municipality must accept that having a responsive website is an essential part of any branding campaign because in most instances it is the leading way consumers will be introduced to your brand. Not having a website can severely impact your brand and credibility. However, a website that is not interactive or easy to navigate is almost as bad as no website. Today consumers access websites from mobile devices more than PC’s and unfortunately many municipal websites are not mobile-friendly.
For municipalities looking to build brand awareness, having a presence on social media is just as important as having a website. Most consumers have social media profiles on platforms such as Facebook, Instagram, Snapchat and Twitter. Since social media is one of the most effective ways to communicate events, news and updates relating to your town, municipalities should have a presence on at least one social media platform. To fully utilize your municipal branding strategy it is important to integrate your website with your social media platforms to create a uniform branding experience.
Creating a brand is the first step in municipal branding. Using the brand consistently by developing comprehensive guidelines will allow the brand to maintain a cohesive look. A piecemeal approach to use of a brand looks amateurish and lacks authenticity. A successful branding campaign should incorporate a uniform brand identity in everything from brochures, signage, stationery, and videos, to social media and websites. Once a branding campaign has been adopted, consistent usage should be encouraged to ensure that logos and slogans as well as color palette and fonts are used consistently and correctly by all departments across all platforms and mediums.
Creating a successful municipal brand is about more than differentiating your destination. To be effective, a municipal branding initiative must involve all stakeholders. Municipalities should engage local businesses, chambers of commerce, citizens, and regional planning commissions in the process to develop a unified message and ensure that the brand embodies and reflects the uniqueness of the town. Establishing authenticity is crucial in building a brand and by involving the whole community in a branding campaign allows the community to invest in identifying its interesting and distinct assets and opportunities, which can help boost economic development, tourism and sense of community.
A well-executed municipal branding initiative can help establish a community identity and attract people and business to a community. It is important to note that a trademark by itself is merely a tool. However, a carefully devised branding campaign can be the cornerstone to a successful economic development strategy.
Lisa N. Thompson is Chair of the New Hampshire Bar Intellectual Property Section and an attorney with Hage Hodes, PA in Manchester. Her practice focuses primarily on business and intellectual property matters. She can be reached at Lthompson@hagehodes.com