Mark my words: protection of athletes’ nicknames & catchphrases in the U.S.Joy J. Wildes, Kevin S. Blum
During a pre-Super Bowl interview on January 27, Marshawn Lynch wore a hat featuring his “Beast Mode” logo. By the next day, the hats were completely sold out. In December, Anthony Davis’ trademark application for FEAR THE BROW® was granted registration. Ryan Lochte’s trademark application for JEAH™ has been approved for registration pending proof of use. It seems that nowadays, every JOHNNY FOOTBALL™ or Bill Rafferty runs, jumps, passes and kicks their way to the Trademark Office.
This article explores important considerations for a sports figure’s trademark protection of monikers or catchphrases, including the basics of U.S. registration, related business concerns and two alternative ways that sports figures can protect their names and catchphrases in the U.S., namely right of publicity and false endorsement claims. This article also touches upon international trademark protection. Armed with this information, sports figures can know what URBAN MEYER KNOWS™, get on board the GUS BUS® and monetize their well-known nicknames and catchphrases.
U.S. Trademark Protection
Sports broadcasters are fond of using the word “trademark” to refer to an action associated with a particular athlete – for example, Jimmy Graham celebrating touchdowns with his “trademark” goalpost dunk 1. This description is in the right ballpark, though not the legal definition of a trademark. A trademark is any word, phrase, name, symbol, logo or even sound or scent that is used by an individual or entity to identify its goods or services, and to indicate the source of the goods or services.
In the United States, trademark rights attach when a mark is used in commerce in this manner.2 It is not enough that a sports figure is known by a certain nickname or uses a certain catch phrase. Only when the nickname or phrase is used by the sports figure (or a related entity) in connection with a product or service, can it become a protectable trademark. Note that, while trademark registration confers certain benefits3, a registration is not necessary to establish trademark rights in the U.S., and a third-party cannot usurp a user’s trademark rights by beating the owner to the Trademark Office.
So, what types of goods or services can athletes brand with their trademarks? Essentially, if the product is not illegal, the sky is the limit. Some of the more common products associated with sports figures’ trademarks include clothing and apparel (for example, Darrelle Revis’ registration for REVIS ISLAND), athletic training or instruction (for example, Pete Maravich’s registration for PISTOL PETE) and providing information about sports and sporting events (for example, Bart Scott’s registration for CAN’T WAIT).
Of course, not all sports figures have a product or service to sell the instant that a nickname or catchphrase takes off. In such situations, trademark owners can protect this intellectual property by filing a trademark application based on a bona fide (genuine) intent to use the mark in the future. Once use is proven, the date that the intent-to-use application was filed will be treated as the date of “first use” if a later dispute arises.
Note, however, that mere dreams of a line of sneakers do not constitute a “bona fide” intent to use a mark. Rather, an intent to use a mark is only bona fide if there is objective evidence of that intent at the time that the application is filed (for example, written evidence of a business plan or product design, or proof that one is attempting to secure financing for the product). If the intent is there, sports figures can ensure early protection of their nicknames and catchphrases while they work on bringing their products or services to market.
Business Considerations Apart from Registration
In the sports world, protecting and exploiting one’s trademarks are not the only considerations. There are other league-specific and sometimes team-specific business rules to take into account.
For instance, a college athlete must be careful not to exploit trademarks in a way that could jeopardize his or her National Collegiate Athletic Association (NCAA)4 eligibility. NCAA Bylaw 220.127.116.11(a) forbids student-athletes from “[a]ccept[ing] any remuneration for or permit[ting] the use of his or her name or picture to advertise, recommend or promote directly the sale or use of a commercial product or service of any kind[.]”5 In other words, the exact actions that give rise to trademark rights in the U.S. – namely, use of a mark in commerce in connection with goods and services – can result in an NCAA athlete losing eligibility.
Notably, the NCAA has not barred the filing of intent-to-use trademark applications by student-athletes. A student-athlete who files a trademark application based on a bona fide intent to use a mark once NCAA eligibility is no longer a concern, and who is eventually able to prove use, would be able to take advantage of a “first use” date of when the application was filed (i.e. when he or she was still in school). Practically speaking, if an applicant takes advantage of all available deadlines, an early priority date can be reserved for more than three years in advance of using a name or nickname in commerce.
For example, Golden State Warriors forward Harrison Barnes filed an intent-to-use application for his nickname, THE BLACK FALCON, on August 19, 2011, two months before the start of his final season at the University of North Carolina.6 A Notice of Allowance was issued for this application and, if Barnes can prove use, he will be granted a registration with rights reaching back to his 2011 filing date.
Cleveland Browns quarterback Johnny Manziel took a similar approach by filing an intent-to-use trademark application for JOHNNY FOOTBALL on February 2, 2013 – six months before the start of his last season playing quarterback for Texas A&M.7 If his application eventually proceeds to registration, then trademark rights will be treated as reaching back to February 2, 2013, when he was still a student.
In the professional arena, athletes also need to be mindful of league- or team-specific rules. Earlier this year, when Marshawn Lynch wore a hat featuring the logo of his company Beast Mode during a pre-Super Bowl interview, there was widespread media speculation that Lynch’s use of his hat would be in violation of NFL rules against wearing non-licensed apparel during official NFL appearances. In this case, Marshawn Lynch got lucky, potentially due to his business relationships; the producer of the hat, New Era, is an NFL licensee and the hat that Lynch wore during the interview was in Seattle Seahawks team colors. Ultimately, the NFL did not fine Lynch.8 However, the commotion surrounding Lynch’s interview should serve as a reminder that ownership of a trademark does not give the right to use that mark in a way that violates league rules or contractual obligations.
Other Ways to Protect Nicknames/Catchphrases in the U.S.
Trademarks are not the only way that sports figures can enforce their famous nicknames and slogans. Most states (but not all) recognize a cause of action for the unauthorized commercial exploitation of individuals’ names and likeness.9 The right to control one’s name and likeness is referred to as their “right of publicity”.
Sports figures past and present have used right of publicity actions to stop unauthorized use of not only their names and images, but their nicknames as well. For example, NFL Hall-of-Famer Elroy Hirsch brought suit against S.C. Johnson & Son alleging that SCJ’s use of the term “Crazylegs” to sell shaving gel violated his right of publicity. In deciding in Hirsch’s favor, the Wisconsin Supreme Court held that a nickname is sufficient to be the basis of a right of publicity claim.10
More recently, in 2013 Johnny Manziel brought suits against two different t-shirt manufacturers for selling t-shirts featuring Manziel’s “Johnny Football” nickname and image, alleging that the actions violated his right of publicity (as well as his trademark rights in his mark JOHNNY FOOTBALL).11 Both cases seemingly settled – the cases were dismissed on stipulation of the parties.
Finally, protection based on false endorsement is another avenue available to a sports figure in the protection of his or her nickname or catchphrase. The federal Lanham Act12, in addition to providing the statutory basis for trademark registration and federal trademark infringement in the United States, provides a right of action where a person’s identity is used in connection with the sale of a product or service in a way that falsely implies that the product or service is endorsed by that person. Sports figures such as Kareem Abdul-Jabbar14 , Michael Jordan15 and the estate of broadcaster John Facenda16 have all brought suit alleging that the unauthorized use of their names, images or voice by advertisers constituted false endorsement.
International Registration Protection
As the popularity of U.S.-based sports leagues continues to grow abroad, there is increasingly a need for sports-related intellectual property protection to extend beyond U.S. borders. For athletes with a desire to “go global”, there are special considerations to be aware of.
In a number of countries outside of the U.S., trademark rights commence when an applicant files to register a trademark with the national Trademark Office, regardless of whether it is the first to use the mark. These countries are referred to as “first-to-use jurisdictions” and include Australia, Canada, South Africa and Hong Kong. However, in many other jurisdictions, trademark rights are based on who is the first to file an application to register a mark in connection with particular goods or services. Generally speaking, in such countries, if a person or entity files a trademark application first, upon registration, they are the exclusive rightsholder regardless of whether others previously used that mark. Since trademark registration is determinative in these “first-to-file” countries – which include major sports markets such as China, Japan, Mexico and Germany – trademark filings in these countries should be a top priority for sports figures who want to protect their nicknames and catchphrases internationally.
One way to protect against being “scooped” in first-to-file countries, especially where U.S. applications may be filed earlier, is to claim priority based on a U.S. application. So long as the countries of interest are signatories to the international intellectual property treaty Paris Convention for the Protection of Industrial Property17 (176 countries), and so long as the international application or applications are filed within six months of the filing of the U.S. application, the mark owner’s foreign applications will be treated as if they were filed as of the same date of the U.S. application.
Also, multiple filings can be expensive. A potentially significant cost saving measure is to file for an International Registration18 rather than filing applications in each country of interest, which allows a trademark owner to file one trademark application, and then extend protection to any of the over 90 participating jurisdictions. International Registration can be significantly less expensive than individual country applications. However, the filing must meet the International Registration criteria in order to be eligible, and there are potential pitfalls to International Registration that should be considered before following this course of action.
If there is interest in maintaining a European presence, an applicant can take advantage of the Community Trade Mark (“CTM”) system19. Under this system, one registration provides protection in all Member States of the European Union (as of this writing, 28 countries). Like the International Registration system, applying for a CTM registration is significantly less expensive than filing national applications in each E.U. member state, but also has potential drawbacks. This approach may be beneficial to sports figures who want to have blanket European rights, but less so for those who are only interested in protecting their nicknames or catchphrases in a handful of European countries.
In short, international registration strategies should be considered with a specific view to the particulars of each sports figure and his or her desired use.
A sports figure looking to monetize his or her nickname and catchphrase should consider domestic and international trademark registration and other U.S. intellectual property rights as a key component of their business strategy. Through effective trademark selection, registration and enforcement, sports figures can maximize the commercial value of their trademark rights, and tell potential infringers – in the words of boxing announcer Michael Buffer (and as registered by Buffer’s company) – LET’S GET READY TO RUMBLE®.
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- Tags: American Football | Community Trade Mark (CTM) | Europe | Intellectual Property | Merchandising | NCAA Division 1 Manual | NFL | Paris Convention for the Protection of Industrial Property | Super Bowl | Trade Mark | United States of America (USA) | United States Patent and Trademark Office (USPTO) | World Intellectual Property Organization (WIPO)
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About the Author
Joy J. Wildes is counsel in the Intellectual Property Practice Group of Davis & Gilbert. She represents advertising agencies, companies and individuals in connection with trademark, advertising, copyright, domain name and corporate intellectual property matters.
Kevin S. Blum is an associate in the Intellectual Property Practice Group of Davis & Gilbert. Mr. Blum represents companies, advertising agencies and individuals in connection with trademark and other intellectual property matters.