Root, Root, Root for the Home Team’s Trademark
The Red Sox are just about as quintessentially Boston as anything in Beantown, but a recent brouhaha between the BoSox and Major League Baseball had people asking whether the team can own Boston.
According to USPTO records, on March 17, 2023, the Boston Red Sox Baseball Club Limited Partnership filed applications to register BOSTON as a trademark for clothing and entertainment and educational services.
Media coverage broadly criticized the applications. By March 24, they were withdrawn. Red Sox owner John Henry reportedly said the MLB, rather than the Red Sox, had initiated the filings.
Applications for SEATTLE by the Mariners and HOUSTON by the Astros also were filed and withdrawn. Much of the coverage centered around whether teams could “own” the names of their cities, but the question is more nuanced than that.
Trademark owners can’t prevent others from using a geographic location simply as a descriptive term. The USPTO will refuse registration of a mark “identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning.” An applicant can overcome this refusal by proving that the mark has become known by the public as something more than the geographic term. This is called acquired distinctiveness and it can be proved by evidence of five years of continuous and exclusive use, public recognition, and prior registration of the same mark.
A winning history
In the 1980s and 1990s, the Red Sox filed applications to register BOSTON in stylized forms. The USPTO preliminarily refused those applications as primarily geographically descriptive. The Red Sox overcame the refusals with evidence of TV viewership, game attendance, retail sales, and more. When the Red Sox filed a new application for a stylized BOSTON mark in 2010, it used those two prior registrations, as well as five years of use, to claim acquired distinctiveness.
The winning streak came to an end when the Red Sox forfeit the new applications. Those applications covered BOSTON in standard characters, without claiming stylization. It’s often easier to register a stylized mark containing a geographic term than a mark in standard characters, but the same standards apply.
Who owns Boston?
If the Red Sox own Boston, they aren’t the only ones. There are registrations for BOSTON in standard characters for the rock band, prosthetic elbows, magazines, staplers, liqueurs, and more. Trademark law doesn’t give owners a monopoly on all use of a word, just the ability to prevent others from using marks for specific goods and services.
So who really does own Boston? With the Major League season now underway, you’ll just have to ask the fans.