Boston Strong: The Trademark War Begins

As soon as #bostonstrong went viral, my mind immediately turned to trademarks. Because I’m a dork and that occupies and HUGE chunk of my daily thought. But, my dork senses were right this time, apparently, since I checked the USPTO database this morning and there are already EIGHT pending applications for “BOSTON STRONG.” All filed by different parties. Ruh roh. Looks like we’re gearing up for a lot of paperwork, and possibly a legal battle for rights. Get the popcorn!

Since I’m imagining most of you don’t fancy searching into the bowels of the USPTO database, here’s all the basic information about the pending marks, in the order they were filed (this is all public record, by the way, so the curious can find it themselves as well):

 

BOSTON STRONG

Filed: 4/17/13

For: Imprinting messages on t-shirts; imprinting messages on wearing apparel, accessories and mugs; imprinting of decorative designs on t-shirts

By: Kerim Senkal, Allston, MA

 

BOSTON STRONG

Filed: 4/17/13

For: Clothing and accessories

By: Born Into It, Inc, Woburn, MA

 

BOSTON STRONG

Filed: 4/20/13

For: Clothing, namely women’s and men’s t-shirts, shirts, sweatshirt, sweaters, shirts, pants shorts, hats, scarves, head-bands, wrist-bands, socks.

By: Allen Dowling, Brockton, MA

 

BOSTON STRONG

File: 4/20/83

For: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.

By: John Schmidt, Port Richey, FL

 

BOSTON STRONG

Filed: 4/20/13

For: Athletic shirts; clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Hooded sweat shirts; Sport shirts; Sweat shirts; T-shirts; T-shirts for and the like; Tee shirts.

By: Emil Vicale, Oxoford, CT

 

BOSTON STRONG

Filed: 4/22/13

For: Beer

By: Michael G. Andrews, Boston, MA

 

BOSTON STRONG

Filed: 4/22/13

For: Bracelets; Jewelry

By: Cathedral Art Metal Co, Providence, RI.

 

BOSTON STRONG COFFEE

Filed: 4/22/13

For: Coffee

By: Michael Viens, aka Meahuna Coffee, Tewksbury, MA

 

Still with me? Ok, let’s dive down this rabbit hole a bit, shall we? Let’s tackle the “easy” applications first, clothing, since there are quite a few of them. According to this article from the Time Magazine site, at least some think its unlikely that a trademark application seeking to get exclusive rights to slapping it on merchandise would be granted by the USPTO. Already, the phrase “Boston Strong” is so widely used, it may have gone into public domain after just a week. The same can probably be argued for the “imprinting services,” while they are technically a different class (t-shirts are physical goods, and printing is, well, a service. To the USPTO, these things are different).

Another obstacle that these applicants may face is whether or not the use of “Boston Strong,” is functioning as a trademark. As trademark must be a source identifier – they are meant to aid the public in figuring out where goods and services originate, so consumers can make informed decisions about the purchases they make. So, when I go to the store to get bleach, I may want to purchase only Clorox, because it’s a brand I trust, and the trademark tells me that I’m picking up a product that will work the way it did for me last time, because it came from the same place/company. Merely putting something on a t-shirt does not make it a trademark; it needs to connect back to a source. Otherwise, it’s just advertising. So Boston Strong needs to function kind of like the “pink ribbon” from Komen for the Cure, where it stands for something “bigger” than just the words themselves.

However, the USPTO won’t just “shut down” these applications. There’s a process to this, people, and the USPTO will see it through. That means it’s going to take a while for us to find out the fate of “Boston Strong” as a trademark. For example, from a procedural perspective, first to file will be hit with the biggest hurdle – perhaps some of the arguments I brought up above. The USPTO will send out the refusal and their reasons why, and the filer will have six months to respond and convince the USPTO otherwise. While that’s going on, all the later filings will be rejected (at least initially) based on likelihood of confusion with the first filer. How the USPTO deals with the first filer will dictate whether or not the “next in line” gets a chance. If the first filer doesn’t even answer, the mark will die and the USPTO will go to the next in line. If the filer answers and the USPTO still isn’t convinced, the mark will die, and the same fate is likely to be befall the other marks as well. If the filer answers and the USPTO IS convinced, they may get the trademark and the later filers will be rejected based on confusion with the first mark filed. And so on and so forth, until there’s a last man standing, or everyone has given up investing money in it, and no one gets the mark.

 

Now remember, this particular process of addressing each trademark “down the line” only applies to goods that are SIMILAR. So, here, clothing, and possibly imprinting. But what about the applications for beer, jewelry and coffee?  I’ll be discussing that next week, in a part 2 of this blog series. Stay tuned!

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