06 May 2020

Athletes trademarks - how to handle


The rise of sports as a media product has spurred on the image of athletes, who are now taking greater pains in building their own image to uphold their reputation, win over even more fans, while attracting sponsors. This can be an additional source of revenue during an active sports career, along with being a potential pillar for business plans in the post-sports period.

Registering their own trademark(s) with both image/name is a good start for athletes to achieving this goal. However, filing a trademark is not something to be under-estimated, as it requires proper care with such matters as (i) the suitable choice of trademark; (ii) the means of exploitation; (iii) the protection strategy over time.

Choice of trademark

Although worldwide trademark legislations differ from each other, there is some common ground for the types of trademarks available, namely:

  • Word trademarks – The NBA coach Pat Riley wisely filed a “three-peat” word mark back in 1988. Its word structure alone allowed him to cash royalties from its use in three-in-a-row championships.
  • Figurative trademarks – Core graphics like any sports team or athletes’ logo such, as Michael Jordan’s famous “jumping man”.
  • Word & Device trademarks – Those having a mixture of the two previous elements, like the PGA Tour organization.

There are several other types of exploitable trademarks, like sound (the famous MGM roar), 3D (the shape of a certain product, like the Lego minifigure) and colour (Tiffany’s Pantone no. 1837).

When considering the registration of an athlete’s trademark, it is advisable to start from the basics and consider those elements that make the athlete directly identifiable for the public:

  • Athlete’s name – a famous athlete’s name stands out for fans (initials/abbreviation) as will each product marketed by the name (merchandising). Nicknames are also quite popular, like Cristiano Ronaldo’s “CR7”. While “Black Mamba” for the late Kobe Briant, is slightly more complex, as it is not only a reflection of the owner’s image but also a reference to the “mamba mentality”.
  • Athlete’s own logo – Tiger Wood’s iconic “TW” combines both the figurative and word elements, while Usain Bolts’ “lightning bolt” pose is a distinctive and iconic gesture, instantly recognisable by the public.

What about goods/services protection? This should be tailored around the specific commercial purposes behind the trademark. Athletes need to take into account the long-term exploitation plans for the trademark. It should also be for any potential products/services relating to the athlete’s post-sports career, shifting the public’s focus to sports-related goods to other kinds of services (foundations, media, etc.).

One sound strategy may be to file for a wide range of goods/services, thus preventing third parties from infringing/seeking protection on their own for identical/similar trademarks. Bear in mind though that The caveat is that the trademark shall be actually deployed for all the relevant products/services so to not incur in a (partial/total) cancellation for non-use. In addition, adding more and more products to an application would entail a cost increase. Furthermore, once the registration is accomplished, the relevant list cannot be amended, so better account for future filing expenses in case of expansion plans to other fields/sectors.

Where may I file my trademark? Jurisdictions such as the middle and Far East are growing markets for football. Athletes should factor in the chosen jurisdiction frameworks well and disregard the DIY solution as an easy fix.

Exploitation

This depends on the business plan of the trademark holder. It is advisable to choose a proper licensing policy and partners, in any case. Licensing is a sound and lucrative practice, however it should be carried out with due regulatory procedure, to assure constant control and to carry out periodic audits on the deployment by the licensee.

This is pivotal to preventing possible misconduct by the latter, as well as any over-appropriation over other rights connected to the trademark itself. On the whole, experience teaches us us to set up a contractual framework granted to the licensor (the athlete) making it possible to regain control swiftly in case of any malicious actions by the licensee.

Trademark enforcement

Athlete trademark enforcement is crucial when considering whether to file. Indeed, the higher the profile of the athlete/holder, the more they would be appealing for infringers/counterfeiters worldwide. Some typical malicious/harmful actions are:

  • Pure trademark infringement – in a territory/for products not covered by the relevant registration a similar/identical trademark is filed with the aim exploit the same illicitly
  • Name/image infringement – the athlete’s name and or gestures are registered by un-authorised third parties.

Both cases require swift action, through contentious and non-contentious means – a cease and desist letter followed by injunctive relief/judgement on the merits.

It is also advisable to this end to have a monitoring service in place so as to promptly detect any threat by a hostile application filed in a country of interest and, therefore, react through legal counsel.

Likewise, another useful means is also an online professional monitoring service, which will cover any other activity de facto potentially infringing on the athlete’s trademark (the unlicensed/un-uthorised image/name on a wall calendar or online merchandising).

Being prepared for such threats. Have a professional (not a DIY over the internet) search carried out by an industry professional, along with a comprehensive filing strategy.

Another benefit of this preparation activity is to be aware of the pre-existence of any third party signs already illegally exploiting the athlete’s image and/or name or that have the potential to become hostile once the athlete’s trademark is deployed in the same territory. Indeed, it is common to come across such practice in PRC, a quite sought after market for certain sports, e.g. football. Luckily, a local applicable framework allows for specific remedies to oppose/cancel such hostile application registrations.

Be wary of the marketing on counterfeited products – in this case the threat mostly comes from users in online marketplaces or un-authorised merchandising e-commerce platforms. This could also entail the per se counterfeiting of goods, also the infringement of the athlete’s trademark and name/image rights. In this case the most viable option is to rely on an online monitoring and takedown the professional service.

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