Four BOSTON STRONG clothing trademark applications refused for failing to function as a trademark

As I predicted shortly after these trademark applications were filed, at least four of the BOSTON STRONG applications have been refused by the USPTO because the proposed mark does not function as a trademark. Those applications that were based on use of the mark in commerce for clothing were also refused because the display of the mark is merely ornamental.

As stated in the Office Action refusals (emphasis added):

Mark Does Not Function as a Trademark – Sections 1, 2, 3, and, 45 – Refusal

Registration is refused because the 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.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229-31 (TTAB 2010) (holding ONCE A MARINE, ALWAYS A MARINE not registrable for clothing items because the mark would be perceived as an old and familiar Marine expression and not a trademark); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived as a familiar safety admonition and not a trademark); TMEP §1202.04.

On April 15, 2013, a bombing occurred at the Boston Marathon that resulted in 3 deaths and more than 260 persons being injured.  See attached, ABC News, Boston Marathon Bombing Suspect to Face Victim’s Families in Court, http://abcnews.go.com/Blotter/boston-marathon-bombing-suspect-face-victims-families-court/story?id=19615495, (July 9, 2013).  Following that event, the motto or slogan, “BOSTON STRONG,” emerged, representing “a proud mix of resiliency and defiance, an attitude rooted in local culture.”  See attached, The Boston Globe, Preserving the original meaning of ‘Boston Strong’, http://www.bostonglobe.com/editorials/2013/06/18/boston-strong-should-marathon-reference-first-and-foremost/bNGas9JxgXggdWrM3zx2pI/story.html, (June 18, 2013).  The slogan represented “the victims of the bombing, now rebuilding their lives; the law enforcement efforts during the manhunt; the decision, by athletes and organizers, to run the Marathon in 2014.”  Id.  It “began in the immediate aftermath of the marathon bombing havoc as nothing but good intention to unify the city and the relief effort.”  See attached, CBS Chicago, Go Ahead, Make Fun of “Boston Strong”, http://chicago.cbslocal.com/2013/06/15/bernstein-go-ahead-make-fun-of-boston-strong/, (June 15, 2013).

 Subsequently, use of the phrase spread “beyond fundraising,” and appeared “plastered on t-shirts, bracelets,” and “sports fans took it over as a rallying cry.”  See, The Boston Globe, Preserving the original meaning of ‘Boston Strong.  It has resulted in a Facebook website (https://www.facebook.com/StayStrongBostonStrong; showing use on t-shirts and signs), is used by the Boston Red Sox baseball club (NESN, Red Sox Raffling off ‘Boston Strong’ Poster, Custom Bat Signed by Entire Team to Raise Money for The One Fund, http://nesn.com/2013/05/red-sox-raffling-off-boston-strong-poster-custom-bat-signed-by-entire-team-to-raise-money-for-the-one-fund/, July 11, 2013); appears on shoelace medallions (CharlestownPatch, Lexington-based Saucony Unveils #BOSTONSTRONG Shoelace Medallions, http://charlestown.patch.com/groups/business-news/p/lexington-based-saucony-unveils-bostonstrong-shoelace51038fafd8, April 26, 2013); was the name of a concert in support of the marathon bombing victims (WCVB News, ‘BOSTON STRONG’ concert to be rebroadcast on WCVB-TV, http://www.wcvb.com/news/entertainment/boston-strong-concert-to-be-rebroadcast-on-wcvbtv/-/9848582/20647618/-/5tq4g9z/-/index.html, June 20, 2013); is the title of a planned movie about the marathon bombing (Huff Post, Boston Marathon Bombing Movie ‘Boston Strong’ Will Be Written By ‘The Fighter’ Screenwriters, http://www.huffingtonpost.com/2013/07/09/boston-marathon-bombing-movie_n_3566379.html, July 11, 2013); and appears emblazoned across the front of t-shirts provided by numerous different entities: Café Press, http://www.cafepress.com/+boston-strong+t-shirts; Zazzle, http://www.zazzle.com/boston+strong+tshirts; College Hype, http://www.bostonstrongtshirts.com/.

The use of the slogan is so widespread with respect to the marathon bombing as well as other uses, that its use has become “ubiquitous.”  See, Runner’s World, BAA Holds First Race since Boston Bombings, http://m.runnersworld.com/races/baa-holds-first-race-since-boston-bombings, June 24, 2013;  CharlestownPatch, Lexington-based Saucony Unveils #BOSTONSTRONG Shoelace Medallions, http://charlestown.patch.com/groups/business-news/p/lexington-based-saucony-unveils-bostonstrong-shoelace51038fafd8; Ignite The Sound, “BOSTON STRONG”: HOW TO OWN A TRAGEDY, http://ignitethesound.com/boston-strong-how-to-own-a-tragedy/, May 15, 2013 (“If you’ve been in Boston these past few weeks, you probably need little background on the now ubiquitous “Boston Strong” brand.” “The words ‘Boston Strong’ appear on buses, on t-shirts, tanks, bracelets, hoodies and bumper stickers,. . . .”).

 Based on the foregoing, consumers are accustomed to seeing this motto or slogan used with respect to the marathon bombing, sporting events, as well as on a variety of consumer goods.  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.  Because consumers will not perceive the motto or slogan as a trademark that identifies the source of applicant’s goods, the mark fails to function as a trademark such that registration is refused under Trademark Act Sections 1, 2, 3, and 45.

Mark is Ornamental – Sections 1, 2 and 45 – Refusal

Registration is refused because the applied-for mark as used on the specimen of record (1) is merely a decorative or ornamental feature of applicant’s clothing; and (2) does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); TMEP §§904.07(b), 1202.03 et seq.

When evaluating a mark that appears to be ornamental, the size, location, dominance, and significance of the alleged mark as applied to the goods are all relevant factors in determining the commercial impression of the applied-for mark.  See,e.g., In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); TMEP §1202.03(a).

With 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.  See TMEP §1202.03(a).  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.  SeeIn re Pro-Line Corp., 28 USPQ2d at 1142 (holding BLACKER THE COLLEGE SWEETER THE KNOWLEDGE centered in large letters across most of the upper half of a shirt, to be a primarily ornamental slogan that was not likely to be perceived as a source indicator); In re Dimitri’s Inc., 9 USPQ2d at 1667-68 (holding SUMO used in connection with stylized depictions of sumo wrestlers and displayed in large lettering across the top-center portion of t-shirts and caps, to be an ornamental feature of the goods that did not function as a trademark); TMEP §1202.03(a), (b), (f)(i), (f)(ii).

In this case, the submitted specimen shows the applied-for mark, “BOSTON STRONG”, located directly on applicant’s t-shirt goods in large lettering across the upper portion of one specimen and at the top and bottom of the second specimen, where ornamental elements often appear.  See TMEP §1202.03(a), (b).  Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods.  Lastly, the applied-for mark is a slogan that, as provided in the failure to function refusal above, has no particular trademark significance.

Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.

Kudos to Examining Attorney Paul C. Crowley who wrote the four refusals. Note that the Examining Attorney cited the recent TTAB decision in In re Lululemon Athletica Can. Inc. regarding ornamentation (see TTABlog® summary here).

For the four Office Actions, see:

• http://tsdr.uspto.gov/documentviewer?caseId=sn85910126&docId=OOA20130712160220#docIndex=0&page=1
• http://tsdr.uspto.gov/documentviewer?caseId=sn85910031&docId=OOA20130712160435#docIndex=0&page=1
• http://tsdr.uspto.gov/documentviewer?caseId=sn85909994&docId=OOA20130712160551#docIndex=0&page=1
• http://tsdr.uspto.gov/documentviewer?caseId=sn85906569&docId=OOA20130712160817#docIndex=0&page=1

Also note that the application by Boston Beer Corporation, makers of Sam Adams, for BOSTON STRONG in connection with beer was recently refused as Primarily Geographically Descriptive.

Will any of the trademark applications spend time and money fighting the USPTO refusals? I sure hope not.