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The Aftermath of 'Boston Strong'

Monday, June 24, 2013

By Joanne Ludovici and Victoria Friedman, McDermott Will & Emery  

The Aftermath of 'Boston Strong': What to Consider When Deciding Whether to Seek Federal Trademark Protection for a Phrase That Has Become Part of the National Lexicon

A definite trend has emerged where people and companies seek to trademark phrases that have become part of the national lexicon as their tickets to financial rewards. Can they trademark such phrases? Yes, under certain circumstances. Should they? That's questionable, again depending on the circumstances.

This article will explore whether such phrases are registrable, enforcement issues associated with registering such phrases, and whether it makes business sense to seek registration of such phrases.

Examples of Marks on Trending Phrases

With respect to registrability, there is no shortage of discussion material when it comes to this topic. The following is a sampling of what has been said and done by the Patent and Trademark Office in the recent years with respect to applications seeking to register trending phrases that become part of the national lexicon. The samples include such applied-for marks as “Boston Strong,” “Linsanity,” “Occupy Wall Street,” “Let's Roll,” and “Three-peat.”

Boston Strong.

Just recently, after the April 15, 2013, Boston Marathon bombing tragedy, “Boston Strong” became a trending phrase. Within days, the phrase was propelled to national prominence, became known throughout the United States and the world and became part of the national lexicon.

Just two days after the tragedy, the office received the first application to register the phrase “Boston Strong” for use in connection with “imprinting messages on t-shirts, imprinting messages on wearing apparel, accessories and mugs, imprinting of decorative designs on t-shirts.”

Over the following three weeks, the office was flooded with eight more applications to register “Boston Strong” for use in connection with goods ranging from sports apparel to jewelry and coffee.1 In total, nine applications have been filed, with eight currently pending.

These applications are too new to have a meaningful prosecution file history that may be discussed. We thus look to recent history of other phrases that spurred a flurry of trademark filings upon becoming a part of the national lexicon, to discuss the registrability of such phrases and to attempt predicting what may happen to the “Boston Strong” applications.

Linsanity.

The trending phrase that garnered a lot of attention in the most recent past is “Linsanity.” “Linsanity” has been described as the euphoria and enthusiasm that took over New York Knicks and NBA fans following the performance of point guard Jeremy Lin in February 2012. When Lin scored more points in his first three starts with the Knicks than any one player, he generated a global following and the phrase “Linsanity” emerged. As many as 14 trademark applications for substantially identical variants of “Linsanity” were filed.

So how has the office handled the “Linsanity” applications? Aside from the more obvious Section 2(c) rejections—under Section 2(c) of the Lanham Trademark Act, 15 U.S.C. §1052(c)—due to applied-for marks consisting of or including the name of a living individual who has not consented to the use of his name, and preliminary Section 2(d) rejections over other pending applications filed around the same time frame, refusals have included Section 2(a) rejections because the applied-for mark includes or consists of matter which may falsely suggest a connection with Jeremy Lin.2

Although at least one applicant argued, inter alia, that the mark is not the same or similar to a name previously used by Jeremy Lin, that the mark points to a social phenomenon, not to Jeremy Lin, and further, that the mark is not a nickname for Jeremy Lin, the office maintained and continued its refusal and suspended the application over similar pending applications having earlier filing dates.

Many other applications have included similar rejections and have subsequently been abandoned, either expressly or for failure to respond to office actions.3 Some applications were expressly abandoned even prior to receiving an office action.4 Aside from the suspended ‘764 application, it is no surprise that the only live “Linsanity” application is the one belonging to Jeremy Lin, himself. Even though no substantive rejections are on record, his application is currently also in suspended status.

Occupy Wall Street.

Also, in the not-so-distant past, in the fall of 2011, “Occupy Wall Street” was a trending phrase that was the subject of several trademark applications.

Application Serial No. 85-454831 was abandoned for failure to respond to an office action. What was the office's position? No surprise there. The office issued refusals under Sections 1, 2, 3, and 45, and it refused registration because “the applied-for mark is merely informational matter, it does not function as a trademark to identify and distinguish applicant's goods from those of others and to indicate the source of the applicant's goods …[;] the term “OCCUPY WALL STREET” merely refers to a nationally recognized political movement.”

Application Serial No. 85-449710 for “Occupy Wall St.” was expressly abandoned prior to being substantively examined by the office. A letter of protest was received against this application from a “concerned citizen” just 10 days after it was filed. The letter stated:

This term should not be trademarked. The individual in question claims they are trademarking it for t-shirts … hwever [sic] people are already using it on t-shirts … Aside from that, it's the name of an existing movement which the petitioner does not own (nor are they necessarily even involved) and it can't be legal for them to steal their name like that … especially since they admit they're only doing it to capitalize on the success of that movement. No one cares if they want to make T-shirts with “occupy wall st” on them … but when they trademark it, they're stopping others from doing the same. Please don't let them get away with this. Thank you.


A letter of protest is one of those underutilized tools that allows a third party to object to the registration of a mark currently pending before the office if the third party provides a basis for refusing registration during ex parte examination. This is an excellent tool, when correctly employed, that is much less expensive than an opposition or cancellation proceeding. It makes one wonder, however, why hasn't it been used more by other “concerned citizens?”

With so much apparent backlash at seemingly opportunistic applicants seeking registration of “Boston Strong,” not a single letter of protest has yet been filed with the office. Perhaps not enough people know about this tool. Or, perhaps, the backlash is not as severe as it has been made to appear. More likely however, is that public opinion and backlash are not valid bases for refusing trademark registration and there is no means for getting the office to act on those grounds.

Yet another “Occupy Wall Street” application, Serial No. 85-454550, is currently suspended. However, prior to the suspension it received a long list of refusals including, most relevantly, a Section 2(e)(1) refusal for descriptiveness and refusals under Sections 1, 2, 3 and 45 because the applied-for mark is merely informational matter: it does not function as a trademark to identify and distinguish applicant's goods from those of others and to indicate the source of the applicant's goods.

The applicant argued that Occupy Wall Street never actually occupied Wall Street, per se, or any significant portion thereof, and that “the descriptive qualities identified by the office in fact fancifully refer to an [sic] movement arising from an inspirational event that simply never occurred.” While the applicant made some interesting arguments with respect to descriptiveness, it appears that the applicant completely skipped over the informational matter refusal in its response.

All of the above rejections were maintained and continued by the office when the application was later suspended. It remains to be seen what, if anything, the applicant will argue with respect to the informational matter refusal, if it continues prosecuting the application.

Let's Roll.

Also, let's look at “Let's Roll,” which, according to Wikipedia5 is:

a catchphrase that has been used extensively as a term to move and start an activity, attack, mission or project. After the September 11 attacks, the phrase, especially in the United States, has come to symbolize heroism, self-sacrifice and initiative in a tough situation. This use of the phrase was inspired by Todd Beamer's final known words, “Are you guys ready? Okay, let's roll!” The phrase has been widely appropriated as a battlecry.


Many applications had been filed claiming rights to the phrase “Let's Roll.” Few, if any, were able to show the required use of the mark at the time of filing and thereafter. Many of the filed applications passed the office examination and received notices of allowance. Almost as many have since been abandoned for failure to submit statements of use or have been cancelled for failure to renew.

Three-Peat.

Similarly, take “Three-peat” as an example. When now-retired basketball coach Pat Riley set a goal for the L.A. Lakers to win three consecutive championships, a new, buzz-worthy phrase had emerged. Riles & Co., Pat Riley's corporation, originally submitted an application in 1988 for the use of “Three-peat” on shirts, jackets, and hats. At the time, the phrase is said to have been used by members and fans of the L.A. Lakers, of whom Riley was the head coach, regarding the Lakers' quest that season to obtain what would have been a third successive NBA championship.6

Riles & Co. subsequently obtained other registrations that expanded the trademark to cover many other kinds of goods. The company has also extensively monetized the phrase and licensed it to various merchandisers, including when the Chicago Bulls won three consecutive NBA championships from 1996 through 1998, the New York Yankees won three straight World Series championships from 1998 through 2000, and the Lakers won three straight NBA championships from 2000 through 2002.7

Around 10 other trademark applications have been filed at the office by third parties seeking to register variants of the phrase “Three-peat.” They were not successful. The third party applicants were merely trying to trade on a phrase that had become part of the lexicon.

Unlike the other lexicon examples discussed above, in the case of “Three-peat” trademark, there was one true owner of the phrase whose own prominence and visibility propelled the phrase to the national level and made the phrase a part of the national lexicon. Pat Riley's corporation properly used the mark and was rightfully able to register it. Pat Riley's company enforced it over the years and the office refused the other applications due to a likelihood of confusion with its registered mark, regardless of whether the phrase was part of the national lexicon.

Registrability Lessons

What can we take away from the ill-fated applications that seek registration of marks that incorporate or consist of trending phrases that become part of the national lexicon? It's not that you cannot register a trending phrase. There is no per se rule precluding an applicant from applying for such marks. There is also no per se rule saying that such marks are not registrable. There is only one rule, the same rule that has always been there—each applied-for mark must meet minimum registrability requirements:


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  • The mark has to be capable of functioning as a trademark, an identifier of source and quality of the goods or services of the applicant.  

  •  
  • The mark has to be used.  

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  • The mark has to be used properly.  

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These are the primary tenets of trademark law, as well as the primary purposes thereof.

It is well known that any symbol can function as a trademark. Even color and sound marks are registrable, if the registrability requirements are met. The registrability requirements do not become more or less strict for trending phrases. Such phrases are judged by the office purely on their merit, with no weight given to the sensationalism, euphoria, controversy, or public opinion that may surround them at the peak of their popularity.

Most applications for marks incorporating or consisting of trending phrases are for use in connection with items such as T-shirts, hats, souvenirs, and other items that are quick to manufacture and easy to sell. However, merely placing a trending phrase on the front of a baseball hat, paper weight, or T-shirt is not proper trademark use. Such use is typically deemed merely ornamental and is not seen by the office as valid trademark use. Many otherwise registrable marks fail because they are simply not used properly in commerce as trademarks, if used at all.

Most importantly, however, the office has not said that it is unethical, offensive, or “un-American” to seek registration of any of the marks discussed above. Public pressure and public perception of a mark and a so-called “community strength” of a mark are wholly irrelevant to the office's analysis. Whether the applicant's image and commercial prospects are damaged or otherwise affected by public perception of a mark is, however, another important consideration that is discussed below.

Even letters of protest, vehicles designed to give third parties an early opportunity to voice their concern with a particular application, echo the same, consistent registrability requirements. Appropriate bases for a letter of protest include genericness, descriptiveness, and likelihood of confusion with another mark that is federally registered or a pending application. Fraud is not a valid ground for a letter of protest. Neither is public opinion about a phrase or community strength of a phrase. The only time the office may potentially consider public perception is if the mark itself was scandalous or immoral.

Issues Related to Enforcement

When it comes to enforcement of such marks, it is very important to remember that trademark owners have an affirmative duty to enforce their trademarks. Failing to prevent the use and/or registration of identical or confusingly similar marks can result in dilution of the mark or the mark becoming generic. However, nothing destroys a phrase's ability to function as a trademark faster than a statement by the applicant that he has no intention to enforce his mark.

Just think back to when one of the first “Boston Strong” applications was filed by Born Into It Inc., a maker of custom T-shirts. Born Into It's owner has been widely quoted online as saying, “Our interest isn't to police the mark. It's more to indemnify and protect ourselves and our colleagues and partners.”

Does this mean that Born Into It is planning to freely allow others to use the mark? If so, it is conceding that that the term has no trademark significance, as it is simply incapable of identifying a party that is the source of the goods in the application, especially without any current use because the application was filed on an intent-to-use basis.

It seems that Born Into It was simply caught between a rock and a hard place. While it wanted to capitalize on the newly gained prominence of the phrase “Boston Strong,” it received so much criticism that, in an effort to downplay its fairly obvious intent to capitalize on the phrase's popularity, made statements that, if true, will forever plague it and may make any attempt to enforce its mark futile.

Another important aspect of trademark enforcement is how to police a mark that includes or consists of a phrase that has become a part of the national lexicon. Is the mark's owner likely to go after every souvenir shop that is printing T-shirts and baseball caps? Is the mark's owner likely to go after every maker of a pin, banner, and bumper sticker that incorporates the phrase? Can the owner afford to pursue the hundreds, if not thousands, of others who are similarly using the phrase?

A phrase does not become part of the national lexicon with only a handful of people using it. It takes a great collective power to propel a phrase to such national prominence. At the same time, can it be that the same engine that propels the phrase to such prominence later becomes nothing more than a group of infringers? Or does the owner pick and choose its targets, risking laches with respect to those it did not bother to sue? These are questions that potential applicants must consider before making a decision to attempt federal trademark registration.

Does Registration Make Business Sense?

At the end of the day, the most important consideration when deciding whether to seek registration of a phrase that has become a part of the national lexicon is whether it makes sound business sense. Likelihood of registrability must be analyzed with an attorney and that makes up a large part of a business owner's decision. However, there are many other factors to consider in this context. Perhaps the other most important factor is the short lifespan of trending phrases.

A typical opportunist gets swept up in the euphoria of trading on the newly minted trending phrase and rushes to the office to seek registration, often without even having used the phrase as a trademark. Registrability considerations aside, does this make business sense? How long does a trending phrase stay “hot?” Will it be “hot” or relevant by the time the application is examined? Will it still be “hot” or relevant when a registration issues, in about a year? Will the registration bring the coveted financial reward? The likely answer to the last question is “no.” Public interest will likely have passed by that time.

Trending phrases emerge suddenly and unexpectedly and disappear in much the same way. Even when such phrases become part of the national lexicon, the cache of the phrase may fizzle out not too long after the events that propelled the phrase to national prominence are forgotten by the news. Even a deeply cherished and sentimental phrase like “Let's Roll,” although forever in the national lexicon and the hearts of Americans, has not been utilized by the applicants who so quickly rushed to the office to seek registration for the phrase.

What is potentially worse is that many once-trending phrases may quickly be deemed “old news” due to oversaturation of product and over-use in the media. Some once-trending phrases may even appear “spent” and “unappealing” after a certain amount of time has passed. Even public perception of a phrase may change over time. What once was considered positive and wholesome may become negative, boring, or notorious after the phrase has passed its peak.

Public scrutiny and public relations considerations are additional factors that should be considered in deciding whether to pursue registration of a phrase that has become part of the national lexicon. Unlike the office, companies are, indeed, swayed and affected by public opinion. Therefore, one must consider what market and public relations advantage, if any, pursuing and owning such a registration offer? Would it be good for the company's image?

What if, as in the “Boston Strong” example, there is a very public backlash at the attempt to register such a phrase? Is it worth it? Most often the answer is “no.” Aside from facing possible criticism, one may simply be considered “unoriginal,” which, according to some, may be even worse for a company's image than being criticized. One “Boston Strong” applicant has already expressly abandoned its trademark application.

Conclusion

Even when it appears that one simply cannot go wrong trading on, and attempting to register, a newly minted member of the national lexicon, a quick four-prong analysis should first be conducted. This analysis should be undertaken together with counsel as follows:


  1.  
  2. Is the mark registrable? Even if the answer is “yes,” don't stop here, go on to the next prongs.
     
  3.  Is use of the mark planned for more than a few years?
     
  4. Is the mark realistically enforceable?
     
  5. Given the current climate, does seeking registration of trending phrases that became part of the national lexicon make sound business and public relations sense?
     

Joanne Ludovici is a partner and Victoria Friedman is counsel at McDermott Will & Emery in the firm's Washington, D.C., and Chicago offices, respectively. Ludovici is head of the McDermott's global trademark prosecution practice and focuses her practice on all aspects of trademark, copyright and domain name acquisition, enforcement, and commercial exploitation. Friedman has extensive experience with trademark matters, licensing strategies, trade secret protection, and corporate due diligence.  




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Disclaimer
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