BOSTON STRONG is a “Ubiquitous” Slogan, Not a Trademark

On April 15, 2013, two men set off bombs at the Boston Marathon, killing three and injuring countless others. As the city of Boston rallied around those injured and those who assisted at the scene, a popular slogan emerged, “Boston Strong,” a sign that the city and its people would survive and prosper after the attack. The slogan appeared frequently on the national news, the Boston Red Sox held a fundraiser using the name, countless individuals used the slogan on clothing items and signs, and there was even a Boston Strong concert to raise money for the victims.

It is in the aftermath of these events that several individuals and companies filed federal trademark applications at the US Patent and Trademark Office (USPTO) for the mark BOSTON STRONG, covering items spanning from clothing and accessories to beer and coffee. One applicant has already expressly abandoned his application. However, several other applications are still pending. The US Patent & Trademark Office recently issued office actions refusing registration for four of these applications, claiming the slogan fails to function as a trademark. The USPTO noted that the phrase “Boston Strong” “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 [the applicants’] goods.” Furthermore, because the term has become “ubiquitous” and “because consumers are accustomed to seeing the slogan or motto commonly used in everyday speech by many different sources, the public will not perceive the motto or slogan as a trademark.”

While applicants are sometimes able to overcome such refusals at the USPTO by submitting evidence of acquired distinctiveness or amending to the Supplemental Register, the USPTO expressly told the applicants that they could not overcome the refusal in this manner. Thus, it appears the fate of these applications is likely sealed. Two newer applications for BOSTON STRONG and BOSTON STRONG COFFEE, both covering coffee products, have not yet been assigned to an examining attorney, though it is likely these applications will also be refused.

This is not the first time that ordinary citizens and companies have tried to capitalize on the publicity surrounding major news stories by filing trademark applications. For example, soon after the successful mission to kill Osama Bin Laden, several entities filed trademark applications for SEAL TEAM SIX, the name of the elite military unit that completed the mission. These applications have all since been abandoned, either expressly by the applicant, or after receiving a refusal from the USPTO on the basis that the applications “ falsely suggest[ed] a connection with the elite unit of the US Department of the Navy known as Seal Team 6.”