Following the bombing at the Boston Marathon in April 2013, the phrase “Boston Strong” became the ubiquitous motto for a city that vowed to present a unified and defiant front in the face of threat and despair. In the aftermath, the city’s residents rallied around each other and their sports teams. The Boston Red Sox (“Red Sox”), seeking to connect with the community and their fans, shortened the phrase “Boston Strong” to “B Strong”, incorporating their famous stylized “B” logo in place of “Boston.” The Red Sox used “B Strong” on their uniforms, on signs in their stadium and on merchandise. During the 2013 World Series won by the Red Sox, “B Strong” was prominently displayed in the outfield grass and could be seen in arial views on national television.
As reported by CBS Boston, a dispute quickly arose with The Braden Aboud Memorial Foundation (“Aboud Foundation”), a Texas charity named in honor of Braden Aboud, who died in a skiing accident. It provides financial assistance to multiple organizations near El Paso, Texas. The Aboud Foundation owns a U.S. federal trademark registration for the “B STRONG and Design” trademark for “charitable fund raising by means of sporting events.” The design of the registered trademark incorporates the letter “B” inside the shape of a dove with the word “STRONG” displayed underneath. The Aboud Foundation registered the “B STRONG and Design” trademark in 2008, claiming use in commerce since 2007.
The crux of this dispute is financial, arising from sales of merchandise incorporating the “B STRONG” trademark. The Abound Foundation admits that the Red Sox have donated the proceeds to charity, but complains that it has not received any of the proceeds.
The Red Sox have indicated that they are willing to enter into an agreement which would acknowledge the Aboud Foundation as the owner of the trademark, but would allow the Red Sox to continue to use the mark. The parties have not, however, been able to agree on whether the Aboud Foundation will be compensated. Recently, the Aboud Foundation hinted that litigation against the Red Sox and Major League Baseball may be necessary in order to resolve the dispute.
From a trademark perspective, the Aboud Foundation has a valid point. While the Red Sox surely had honorable intentions in adopting and using “B STRONG”, and while they have donated the proceeds to charity, the Aboud Foundation appears to have valid trademark rights. In a trademark infringement litigation to enforce those rights, the Aboud Foundation could seek an injunction prohibiting the Red Sox from continuing to use the mark as well as an award of all profits received from use of the mark. Ultimately, given the public relations hit that both sides would take if litigation ensues, we suspect that the parties will ultimately reach an amicable resolution.
