By: Kate Kramer
Published: May 20, 2025
On February 3, 2025, D.C. Superior Court Judge Tanya Jones Bosier made an unprecedented move when she ordered that the trademark “PROUD BOYS” be transferred to the Washington, D.C. Metropolitan African Methodist Episcopal Church (“Metropolitan AME Church”) as a part of a lawsuit between the Church and the Proud Boys.[1] The Proud Boys are a far-right neo-fascist militant group who have become increasingly public and violent over the last decade.[2] The Metropolitan AME Church was founded in 1838 to provide a place where the Black community could worship safely away from segregated churches.[3] The building has since been designated a historic place by the National Register of Historical Places.[4] The dispute between the two parties stemmed from a December 2020 act of vandalism carried out by members of the Proud Boys against the Metropolitan AME Church, which involved the forcible removal and subsequent destruction of a Black Lives Matter sign that was hanging in front of the Church.[5] The members of the Proud Boys that perpetrated this crime were in Washington, D.C. for a pro-Trump rally taking place around the same time.[6] In response to these acts, on January 4, 2021, the Metropolitan AME Church sued the Proud Boys and their leader at the time, Enrique Tarrio, as co-defendants.[7] The Church alleged several counts including bias-related conspiracy, theft, defacement of private property, and intentional damage or destruction of religious property.[8]
Neither Tarrio nor any other representative of the Proud Boys appeared in court on the trial date, so the Metropolitan AME Church filed motions for default judgment.[9] As a result, Judge Bosier granted the Metropolitan AME Church’s motion for default judgment and awarded $2.8 million in damages.[10] The Proud Boys failed to pay, however, so the church brought a second action to enforce the damages award.[11] In this second complaint, the Metropolitan AME Church used a different tactic specifically targeting the trademark “PROUD BOYS.” The church requested that the court do three things in relation to the Proud Boys’ trademark: (1) transfer all interests in the now cancelled trademark “PROUD BOYS” (No. 87561573) to the church, (2) impose a lien on the trademark “PROUD BOYS” in favor of the church, and (3) permanently enjoin the Proud Boys and anyone associated with them presently or in the future from selling, transferring, disposing of, or licensing the trademark without the church’s consent.[12]
At the time the complaint was filed, this particular trademark was the only one that the Proud Boys group owned according to United States Patent and Trademark Office (“USPTO”) records.[13] The motion for default argued that the Proud Boys’ trademark was its “only material asset,” and thus should be forfeited to the Metropolitan AME Church as a means of enforcing the default judgment.[14] The actual materiality of this trademark, however, is questionable. This begs the question: does the transfer of the trademark from the Proud Boys to the Metropolitan AME Church even satisfy the default judgment award?
It is extremely rare for trademarks to be forcibly transferred as a remedy, even in trademark disputes. This is because the Lanham Act, which is the statute that governs trademark law, does not appear to allow the flexibility necessary for a trademark to be transferred to a new owner while still retaining its commercial value. According to the Lanham Act, in order for a mark to be considered a trademark, three elements must be present: (1) it must be distinctive, (2) it must be used in commerce, and (3) it must function as a trademark.[15] To be distinctive means the trademark must “identify and distinguish” one’s goods or services from the goods or services of another entity in the market.[16] Additionally, a trademark is properly used in commerce if it is used specifically in interstate commerce.[17] Finally, to function as a trademark means that the mark is an indicator of source in the minds of consumers.[18] Put simply, consumers must be able to correctly determine the source of the goods or services simply by looking at the associated mark.
The requirement to function as a trademark is the lynchpin in this particular discussion because it is the only trademark element implicated when a trademark is transferred. The ability to function as a trademark is directly linked to who owns that trademark, which obviously changes when a trademark is transferred. Therefore, the change in ownership that comes with the transfer of a trademark from one entity to another appears as though it might actually entirely invalidate the trademark. When the owner of a trademark changes, the particular source that the trademark is supposed to indicate to consumers also changes. If consumers continue to associate the trademark with its former owner rather than its new one, it is not serving as an indicator of source—and thus, is not functioning as a trademark.[19] Therefore, the mark would not meet the requirements for trademarkability.[20] In reference to the Proud Boys, it is possible that Judge Bosier’s transfer of the trademark from the Proud Boys to the Metropolitan AME Church entirely strips the trademark of its trademark eligibility. This would mean that what was ultimately given to the Metropolitan AME Church was merely a word, which is nowhere near the same as a legally protected trademark.
In kicking the legs out from under the Proud Boys trademark, Judge Bosier may have also entirely undermined what the transfer was supposed to achieve: the enforcement of the $2.8 million default judgment. Although trademark holdings are a very valuable asset to entities in the market, they are only valuable if they are legally sound. In the present situation, it is likely that the church’s attorneys requested the transfer of the trademark because they were aware of its value. What the attorneys and Judge Bosier failed to account for, however, was the impact that the transfer would have on the trademark’s legal soundness, and thus its value. Given the novelty of this situation, only time will tell if the transfer of a trademark can serve as a valid default judgement award.
[1] Order and Default Judgment, No. 2024-CAB-004147, Metro. Afr. Methodist Episcopal Church v. Proud Boys Int’l, LLC at 2 (D.C. Super. Ct. Feb. 3, 2025).
[2] Proud Boys, Anti-Defamation League (last updated Jan. 16, 2025), https://www.adl.org/resources/backgrounder/proud-boys.
[3] Our Church, Metro. Afr. Methodist Episcopal Church, https://www.metropolitaname.org/our-church (last visited Mar. 28, 2025).
[4] Chandelis Duster, Historic Black Church Given ‘Proud Boys’ Trademark Calls for Stand Against Hate, NPR (Feb. 6, 2025, 5:10 P.M.), https://www.npr.org/2025/02/06/nx-s1-5287867/historic-black-church-trademark-proud-boys.
[5] Id.
[6] Id.
[7] Memorandum Opinion and Order Granting Plaintiff’s Motion for Default Judgement and Injunctive Relief Against Defendants Proud Boys International, LLC, Enrique Tarrio, Joseph R. Biggs, Jeremy Bertino, and John Turano, No. 2021-CA-000004-B, Metro. Afr. Methodist Episcopal Church v. Proud Boys Int’l, LLC at 2 (D.C. Super. Ct. Feb. 3, 2025) (noting that on January 12, 2022 an amended complaint was filed adding several federal civil rights claims and additional defendants).
[8] Complaint, No. 2024-CAB-004147, Metro. Afr. Methodist Episcopal Church v. Proud Boys Int’l, LLC at 28-33 (D.C. Super. Ct. Jan. 4, 2021).
[9] Plaintiff’s Motion for Default Judgment and Injunctive Relief, No. 2024-CAB-004147, Metro. Afr. Methodist Episcopal Church v. Proud Boys Int’l, LLC at 2 (D.C. Super. Ct. Dec. 10, 2024) (explaining that the motion for default judgement against the Proud Boys was filed on August 31, 2022, while the one against Tarrio was filed on 23, 2023).
[10] Order and Default Judgment, No. 2024-CAB-004147, Metro. Afr. Methodist Episcopal Church v. Proud Boys Int’l, LLC at 1-2 (D.C. Super. Ct. Feb. 3, 2025).
[11] Id.
[12] Id.
[13] Proud Boys, U.S. Pat. and Trademark Off., https://tsdr.uspto.gov/#caseNumber=87561573&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch (last visited Apr. 4, 2025) (highlighting that the trademark on “PROUD BOYS” was acquired in 2017, but it was subsequently cancelled on May 14, 2021).
[14] Order and Default Judgment, No. 2024-CAB-004147, Metro. Afr. Methodist Episcopal Church v. Proud Boys Int’l, LLC at 2 (D.C. Super. Ct. Feb. 3, 2025).
[15] 15 U.S.C.A. § 1127.
[16] Id.
[17] See id. (citing Christian Faith Fellowship Ch. v. Adidas AG, 841 F.3d 986, 992-93 (Fed. Cir. 2016) (explaining that interstate commerce is specifically required because according to the Commerce Clause, which provides the legal basis for the Lanham Act, Congress only has jurisdiction over commercial activities that cross state boarders).
[18] See id. (citing Radiance Found v. NAACP, 786 F.3d 316, 323-24 (4th Cir. 2015).
[19] Id.
[20] See id. (citing Tumblebus Inc. v. Cranmer, 399 F.3d 754, 764 (6th Cir. 2005) (identifying ‘naked licensing’ as a type of trademark abandonment when the presence of the trademark misrepresents the connection to the goods and services being offered, no longer providing a ‘meaningful assurance of quality’).