23 March 2018
This article was initially published by Law360 on February 5, 2018.
The Olympics have the unique ability to catapult a relatively unknown name into global celebrity. With new celebrity comes opportunity and responsibility. Athletes suddenly have a “brand” to sell and to protect. Obtaining a federal trademark registration to protect the branding on nicknames, catchphrases and slogans associated with an athlete's name can help protect the athlete's brand. It ensures that the athlete, and his or her authorized licensees, are the only persons to benefit from the brand. But before filing for federal trademark registration, athletes and their advisers should understand the reasons for proceeding and the process involved.
It's Never Too Early to Start
It may be difficult for Olympians to project their success at an Olympic Games. Generally, however, athletes that anticipate being in a position to commercialize their brand should consider protecting this future source of revenue.
While the National Collegiate Athletic Association forbids student-athletes from commercializing their athletic success, some student athletes have at least sought to obtain legal ownership of nicknames, slogans and monikers tied to their name before actually being able to reap any commercial benefit. For example, former Mississippi State University and current Dallas Cowboys quarterback Dak Prescott reportedly applied for a federal trademark on “Dak Attack” and “Who Dak,” monikers that were associated with him while in college. College athletes that expect to have lucrative professional careers have considered doing the same. There are important legal issues for student-athletes to consider, both relating to trademark law and NCAA eligibility rules, so it's best to obtain legal advice before proceeding with an application.
Athletes that wait too long to protect their brand may be surprised to discover that someone has already beat them to it. Sometimes, “trademark poachers” or “trademark trolls” acquire legal rights over a mark and seek to profit by demanding a fee for the rights to the mark from the athlete or celebrity. In 2012, basketball player Jeremy Lin, then of the New York Knicks, applied to trademark “Linsanity” only to learn that someone applied for the same trademark two days earlier. Anthony Davis, former University of Kentucky and current New Orleans Pelicans basketball player, sought to trademark the phrases “Fear the Brow” and “Raise the Brow” in 2012 but a University of Kentucky apparel store owner trademarked them earlier that year.
Although there are ways to challenge these prior filers, the challenge comes at a cost. To avoid falling victim to such a scam, it's best to protect your brand as soon as you believe it may have future value.
Registering nicknames, catchphrases and slogans provides athletes with an additional revenue stream beyond solely lending an image and likeness to a company's product or service. In some cases, a catchphrase or slogan may have greater longevity than a career and may resonate with fans and consumers longer than an athlete's celebrity will. Take Oakland Raiders running back Marshawn Lynch, whose brand “Best Mode” will arguably have consumer appeal long after Marshawn Lynch retires from the NFL.
Research the Mark
Before proceeding with a trademark registration, conduct a search of the potential marks that you hope to protect. Trademark attorneys conduct a trademark search at the U.S. Patent and Trademark Office and state registries to determine if the mark is already registered by a third party or is subject to a pending application. Comprehensive searches are important since unregistered trademarks will not appear in the USPTO’s database but may impact legal rights.
What Protection Is Available?
A federal registration is not required. Individuals can establish “common law” rights in a mark based upon their use of the mark. There are certain designations (e.g., “TM” and “SM”) that help protect a nonregistered mark. Including the appropriate designation informs the world that someone has adopted the mark as a trademark or service mark.
Trademarks can also be registered with a state. State requirements vary, but generally state registration is relatively quick and inexpensive. State registrations do not offer much additional protection beyond common law rights.
A federal trademark registration offers the most protection, as it creates a legal presumption of ownership and the exclusive right to use the mark throughout the United States. Obtaining a trademark registration from the USPTO requires compliance with applicable statutes and rules. A complete and accurate trademark application will help you gain access to all the rights associated with a registered mark.
A federal registration provides public notice of ownership, listing with the USPTO, the ability to record the mark with U.S. Customs and Border Protection to prevent importation of infringing foreign goods, use of the federal registration symbol ®, and use of the federal registration to obtain registration in foreign countries.
Your Brand Must Be Associated With an Actual Product or Service
To obtain a registered trademark, a mark must be tied to an actual product or service. “Intent-to-use” applications can be filed and essentially approved, which is particularly relevant in the case of college athletes who cannot commercialize their brand while in school. However, before a mark subject to an intent-to-use application is actually registered the athlete must demonstrate to the USPTO that the mark is currently being used with a product or service in the U.S.
Use Your Trademark Properly
Once a mark is registered, you should use the ® trademark symbol. Going forward, any merchandise using the ® trademark symbol informs the consuming public that the mark is federally registered. Athletes and their advisers should be mindful of and responsive to counterfeit or illicit goods that may infringe on the athlete's mark. Other marks could potentially infringe upon your rights as well. For example, in 2017 Nike Inc. filed a formal opposition to a logo containing New England Patriots tight end Rob Gronkowski in silhouette spiking a football. Nike claimed that the logo could be confused with Nike's iconic Air Jordan Jumpman logo that Nike has used since 1987. Failing to properly police and enforce rights may lead to loss or limitation of their trademark rights.
The Cleveland Indians recently decided to pull their famous Chief Wahoo logo off their uniforms beginning in the 2019 season. Chief Wahoo, a caricature of a Native American, has long been the subject of criticism. While the Indians are pulling Chief Wahoo from their game uniforms, they have no intention of relinquishing the trademark. In order to maintain the trademark the Indians must continue to sell merchandise featuring the logo. If the Indians did relinquish or abandon the logo, a third party could attempt to claim the logo and profit from its use.
In addition, athletes should be mindful of the rights of others when using their mark. Olympic athletes, for example, seeking to commercialize their brand during and after the Olympics, should be aware of the U.S. Olympic Committee's own trademarks, its strict policy regarding the use of those trademarks and its aggressive policing policy.