BOSTON STRONG Trademark Applications Fail
Shortly following the bombing at this year’s Boston Marathon, several parties raced to the US Patent and Trademark Office to file trademark applications for BOSTON STRONG in connection with apparel. In addition to being (at least apparently) distasteful, these applications failed to meet the necessary standards for apparel trademarks, and this month, they were rejected by the USPTO.
Images on clothing are subject to a different sort of trademark review compared to other types of goods. To function as a trademark, the image must not be “purely ornamental or decorative.” It’s common to stick wording or an image on a t-shirt or a hat to advertise some other good or service. As a result…
…[w]ith respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front or back of a t-shirt. (Quote from the USPTO Office Actions in response to the BOSTON STRONG applications.)
The USPTO Examining Attorney went on to note that…
[T]he applied-for mark merely conveys an informational social, political, religious, or similar kind of message; it does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others…Because consumers are accustomed to seeing this slogan or motto commonly used in everyday speech by many different sources, the public will not perceive the motto or slogan as a trademark that identifies the source of applicant’s goods but rather only as conveying an informational message.
So how does one register a trademark for use on clothing? In some cases, a smaller logo (such as the famous Polo pony) can function as a trademark. More typically, having the mark appear on hang tags, sewn-in tags, or on product packaging will suffice.
There was, naturally, some degree of controversy concerning the BOSTON STRONG trademark applications. There was a perception, at least, that the applicants were attempting to profit off of a tragedy. Marketplace.org reported:
Born Into It is one of the parties trying to register “Boston Strong.” In a statement, the company claims it has no intention of policing the trademark. It wants to make sure others don’t profit from it.
Whether or not that was true, it’s not really how trademarks work – a trademark is something that identifies the source of goods or services. In the end, it didn’t matter, because these issues were easily decided based on common trademark law principles. It remains to be seen if any of the BOSTON STRONG trademark applicants attempt to challenge the USPTO’s ruling.
