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Boston Strong: This is our bleeping trademark

Posted by Chad O'Connor  November 12, 2013 11:00 AM

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Back in June, I posted a two-part blog series covering various persons and companies that had filed for “Boston Strong” trademarks with the United States Patent and Trademark Office, and analyzed the likelihood of registration. You can read the original entries here and here. I wrote them a mere two months after the bombing tragedy here in Boston and the USPTO hadn’t yet responded to any of the applications, so many branding and trademark experts could only speculate how the chips would fall. Well, in July 2013, the USPTO answered all of the pending applications. So where are the now, and what is the fate of “Boston Strong” and its trademark rights?

In short, all the marks have been rejected. Every. Last. One. Though the variety of goods and services in the applications ranged from clothing to coffee to beer, they were all rejected for summarily the same reason – ubiquity.

Ugh, ubiquawhat?

In short, ubiquity is “you can’t have it, it belongs to the people now.” A trademark becomes ubiquitous when, through either the actions (or inactions) of the brand owner, or the actions of the public, the association between the mark and the brand is either “broken” or never established in the first place. In the case of “Boston Strong,” the USPTO has said that the public doesn’t associate it with one source or brand, but rather sees it as a “social, political, religious or similar kind of message” used in everyday speech. While this can occur over time with a formally established mark, it’s most closely associated with applications attempting to trademark a newsworthy word or phrase. For example, there were many applications for “9/11” after the terrorist attacks on September 11, 2001, as well as applications for “Team Six Navy Seals” after the assassination of Osama Bin Laden.

Given the progression and meaning that’s been attached to “Boston Strong” since the events that following the Boston Marathon Bombing, it’s easy denounce these applications as attempting to unfairly capitalize on tragedy. I would urge you to reconsider. Most of these applications were filed within a week of April 15th, 2013, where the “Boston Strong” phrase was just barely beginning to gain some ground. It had potential, but no real value yet. I don’t think the applicants were trademark trolls as much as they were ahead of the curve in seeing how to connect the mark with their companies. No one could have predicted how powerful the phrase would become which is why in part the USPTO waits several months to respond to trademark applications.

Clearly the phrase has since developed into a deep rallying cry for the city of Boston and beyond, which is why the USPTO has basically determined that no one can have exclusive rights over the phrase in any industry; at least, not right now. There’s always a chance that as the phrase weaves it’s way through our culture, it could become less significant or more unique in certain areas, so we might still see registration of the “Boston Strong” trademark some day.

Finally, I should note that all the applications (with the exception of one) are still pending and still have time to respond to the 100+ page rejection they’re received from the USPTO. There’s still a chance that an applicant could present arguments valid enough to overcome the ubiquity argument, especially for some of the more distant products like beer or coffee (as I mentioned in my prior blog, coffee is often described as “strong,” and a “strong ale” is a brew of beer). I must admit, though, I find it highly unlikely any of these marks will overcome the rejections, which are chock full of magazine and newspaper articles absolutely covered in “Boston Strong” references. Plus, I know how much lawyers charge to answer a 100-page rejection from the United State Patent and Trademark Office, and let’s just say it’s an “investment.”

No, it seems more likely to me that, in the modified words of Big Papi, “Boston Strong” will be everybody’s “bleeping trademark.”

Shannon Sadowski is an attorney and co-founder of New Leaf Legal, a law firm serving entrepreneurs, socially-minded businesses, and artists. She lives in Watertown with her husband, 3 cats, and their shiba inu, Raiden.

This blog is not written or edited by or the Boston Globe.
The author is solely responsible for the content.

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