Black Church Breaks New Legal Ground Taking Over Proud Boys IP

A historic Black church unable to compel the far-right Proud Boys to pay a $2.8 million vandalism judgment accepted an unusual substitute: rights to a trademark signifying everything it rejects.

The symbolic victory of acquiring “Proud Boys” trademark rights could stand on legally shaky ground, intellectual property attorneys said, because transferred trademarks generally have to retain some of their original essence. That uncertainty, First Amendment implications, and enforcement costs raise questions about the legal and practical realities of an unusual order—though attorneys said courts have shown flexibility with other trademarks in loosely analogous situations.

The Metropolitan African Methodist Episcopal Church in Washington, D.C., secured the rights in a Feb. 3 court order after the Proud Boys failed to pay a District of Columbia Superior Court default judgment. The church celebrated being the first Black institution to own the “property of a white supremacist group” in a judgment “stripping them of the very name they rallied under.” It began selling shirts bearing Proud Boys’ black and yellow colors and circular “PB” logo, framed with “Stay Proud, Stay Black” or “Stay Proud, Black Lives Matter.”

But the purpose of a trademark is to indicate who produced or sanctioned a product, and the church is unlikely to use Proud Boys in a manner suggesting the group’s approval. Ironic merchandise would be perceived as ornamental messaging—and free speech—rather than trademark use, intellectual property attorney Julia Anne Matheson of Potomac Law Group PLLC said.

“The whole point is a trademark identifies a single source, and the positions of this organization are antithetical to the church,” Matheson said. “I strongly suspect the reason the judge did this was message-sending more than any legal remedy.”

Matheson and IP law professor Rebecca Tushnet of Harvard University both noted trademark assignments must include associated goodwill to be valid. Without the original entity’s goodwill—its reputation—to indicate the type and quality of the goods, the transfer is a legally void “assignment in gross.” Tushnet questioned whether there could be any valid transfer between the two parties at all.

“Do they have a case they’re maintaining the quality of the goods and services in any relevant way, or is it just a naked assignment?” Tushnet said.

But IP attorney S. Claire Gibson of Day Pitney LLP argued goodwill was transferred, noting the church’s shirts use Proud Boys colors and imagery. The church’s use isn’t disconnected from the group’s reputation, she argued—it relies on it.

“Everyone knows who the Proud Boys are, everyone knows what the brand is, everyone knows the vehicle that resulted in that change,” Gibson said. “They’re leaning into the representation of the brand, saying, ‘We’re speaking to that specifically.’”

Missing Confusion

During a rally defending President Donald Trump on Dec. 12, 2020, a group of Proud Boys members tore down and destroyed a “Black Lives Matter” sign in front of the 150-year-old church, which is listed in the National Register of Historic Places, according to a 2023 ruling.

The church sued and won a default judgment in 2023 on claims including trespassing, destruction of religious property, and civil rights violations. It sued again in 2024 after Proud Boys International LLC and other defendants failed to pay. Judge Tanya Jones Bosier’s Feb. 3 order assigning the currently unregistered trademark also put a lien on it entitling the church to any money Proud Boys make off it.

The most interesting aspect of the order “is the near total lack of precedents,” IP law professor Christine Haight Farley of American University said. A transfer between private parties is different than cases like the government seizure of a “Mustang Ranch” brothel trademark in a tax case or an ultimately reversed seizure of the “Mongol Nation” motorcycle gang trademark in a racketeering case.

The remedy “at first blush seems like really creative lawyering” giving a theoretically valuable asset to a sympathetic party struggling to collect, Farley said. But it could be invalidated as an assignment in gross, she added.

Either side could also struggle to argue infringement against the other—which would hinge on consumer confusion and free expression. The church arguably already had the right to sell the shirts it now offers, Tushnet said, but before the order, the Proud Boys would’ve had enough of a trademark case to extend litigation.

Meanwhile, continued use of the name by the Proud Boys may find little resistance in trademark law, Farley said.

“Who is going to be confused by that?” Farley said. “If the church was to sue for trademark infringement, the Proud Boys could turn around and raise the First Amendment.”

But Gibson said most continued uses of the group name would flout trademark law. If the name is used to identify a group collecting donations or membership dues, or hosting an event or workshops, it could be deemed use in commerce.

“It comes down to whether the business name is front and center in marketing and advertising,” she said.

Enforcement would depend on the church’s efforts, she added, which won’t be cheap. There’s “unlikely to be one large entity,” so policing the mark could run up against a “whack-a-mole” problem.

An attorney for Metropolitan AME Church declined to comment.

Proud Boys leader Enrique Tarrio, who is among those pardoned last month by Trump for his role in the Jan. 6 insurrection, posted on X that he holds the judgment in contempt, and accused the church of a “campaign of harassment and falsehoods.”

‘A Very Specific Group’

Transferring trademark rights as a remedy in non-trademark disputes is rare. One context where it has happened is bankruptcy. While parties may not be fundamentally opposed, as they are in this case, there can still be continuity lapses in how the mark is used, IP attorney Pamela Chestek of Chestek Legal said.

“If you buy an asset out of bankruptcy, it’s my anecdotal view that courts bend over backwards not to invalidate those trademarks,” Chestek said.

The law typically requires goodwill to come with tangible assets from the prior owner, such as customer lists or facilities, Tushnet said. But she agreed courts are “sometimes quite lenient in this,” and said, “You can never tell how far a court will take its equitable urge.”

A 2018 “Proud Boys” registration—canceled by the entity that owned it in 2021—covered “organizing chapters of a fraternity,” with no mention of ideology. The church could argue it’s using the mark for a broadly similar purpose, Chestek said.

“But that completely ignores the fact that this trademark is actually associated with a very specific group with very specific beliefs and behaviors,” Chestek said.

The church’s use could muddy the waters and impact the name’s long-term viability for the group, Matheson said. People seeing “Black Lives Matter” shirts with Proud Boys branding in public could ultimately detach the trademark from its original associations with the right-wing group, she said, “depleting its value” to the Proud Boys.

The ultimate effect of the transfer to the church “is not so much a win in its ability to recoup damages,” Matheson said, “but more in enabling it to use the mark in a manner that so dilutes the trademark’s original messaging that ultimately it destroys its inherent value to the Proud Boys organization, thereby forcing their rebrand.”