I’ve been following the IP obsession of New York’s Metropolitan Transit Authority for a while now, including past efforts to maintain control over the use of the iconic subway-line symbols as trademarks. I expressed particular skepticism that the MTA was in much of a position to complain about any unauthorized misuse of the marks once it had permitted and promoted that use in connection with “NYC Condom.”
Amazing to consider it, but that post was written (gulp) five years ago, almost to the day.
But half a decade later, the issue came up when I stepped into a Lexington Avenue train (the East Side line — of course) festooned exclusively with display ads for kind-of-fancy shoe maker Cole Haan, again integrating the famous letter-in-a-colored-circle logos to spell out all sorts of things — including, naturally:
That’s COLE HAAN, of course — spelled CQLE HAAN (with a “Q”) because there’s no “O” train.
One ad using this element of what I learned is called the “Subways Stories” campaign is shown here in a screenshot from the Cole-Haan website (I can’t find it online now), borrowed from one of many fashion and advertising blogs that conveyed its appreciation of the campaign, including one that Cole Haan paid to run Subway Stories ads on.
This kind of campaign is what the ad agency that sells them, CBS Outdoor, calls a “brand train.” It is meant to be interactive; “On Cole Haanâ€™s Facebook page, fans can read and submit â€œSubway Storiesâ€ and images of the new collection,” which it is hoped (not too seriously) will look these professional ones. The ads were placed throughout the MTA display ad empire — on station signs and everything else you can festoon with ads — as well as “brand trains.”
As the Luxury Daily blog reports, “Cole Haan used New York because it is a city that ‘never settles.’ The brand vows that as long as it moves, Cole Haan will move with it, according to various testimonies on its marketing.” Which is fine for “Cqle Haan” — I mean, okay, New York is really the “City that never sleeps,” not “never settles,” but whatever. For the MTA, however, a moving brand identity is less good.
First, as I said with respect to the condom ads, the MTA, which is the only possible claimant in the train symbols because it provides the services with which they are connected, “is not New York City.” Even to the extent you wanted to argue, and it has been done, that the MTA and “the City of New York” — i.e., the municipal entity — are interchangeable (or something), the Cole Haan campaign is not about city services. It’s about the concept of “New York City.” So the MTA is at the very least a partner in the dilution of its own alleged trademarks, twice in five years running ad campaigns by which consumers are bidden to associate the respective letters, not to specific train lines, but with “New York City.”
It would also be hard to make an argument that this arrangement, if indeed it is part of a license that actually addresses the use of any MTA trademarks — none of the ads I’ve seen contains a trademark claim or disclaimer — is a merchandising-type license, which would encompass use on unrelated goods under the language of the Lanham Act, as amended, that includes products or services affiliated, connected, sponsored, associated with or approved by the mark owner. Here the Cole Haan ads are the authorized use; the logos are not being placed on other products or services. And the ads are not for uptown, downtown or even crosstown subway service. They’re Cole Haan ads for Cole Haan products utilizing the MTA logos.
Anyway, as I argue here, “sponsorship” or “affiliation” still requires some plausible connection between the mark and the product — if it doesn’t, such use renders trademark rights meaningless except as rights in gross. Under American law, of course, such “rights” as applied to supposed trademarks aren’t rights at all.
So, fine. I think this is a creative, fun and — obviously — buzz-making ad campaign that benefits Cole Haan and the MTA. The latter not only generates ad revenue, but also develops a funky and stylish brand association both on the Cole Haan side and with respect to the more realistic association of the MTA symbols in general with, in fact, the Big Apple itself, separate and apart from their utilitarian functions as subway-line identifiers. If the sacrifice is the MTA’s ability to enforce its putative trademark claims against others who want to make that association, that seems worthwhile. At this point the MTA train symbols are, more than ever, hard to see as protectible trademarks.
It would be a shame, of course, if the MTA ignored all this and used its budget-free legal department, or that of the City of New York, to prevent less-well-funded enterprises from using the symbols anyway. But for a municipality that is busy telling us what we can eat, what hungry people can eat and all the other fine-grained thing we need Mike Bloomberg’s advice about — why, who could imagine spending taxpayer dollars on who slaps an A, B or C on cap or t-shirt?
But if you see something, say something — I’d like to know. Just click: