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MARK MY WORDS: PROTECTION OF ATHLETES’
NICKNAMES & CATCHPHRASES IN THE U.S.
By Joy J. Wildes & Kevin S. Blum
This article was first written for and published by LawInSport on 7
May 2015. View the original article.
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
dunk1. 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
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1
C Stephenson, ‘Saints' Jimmy Graham reportedly fined $30,000 for goal post dunk celebrations ‘, 22 August 2014, last viewed on 5 May 2015,
http://www.al.com/sports/index.ssf/2014/08/saints_jimmy_graham_reportedly.html (referencing Jimmy Graham’s goalpost dunks as his
“trademark dunk celebration”)
2
‘Protecting your trademark: Enhancing your rights through federal registration’, USPTO, 2014, last viewed on 5 May 2015,
http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf, pg 9 (“In the United States, parties are not required to register their
marks to obtain protectable rights.
You can establish “common law” rights in a mark based solely on use of the mark in commerce,
without a registration.”)
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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 12.5.2.1(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
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3
For example, a registration provides nationwide constructive notice of trademark ownership (15 U.S.C. § 1072), the ability to record a mark with
U.S. Customs & Border Protection so that Customs will detain perceived counterfeits or infringements at the point of entry (see:
http://www.uspto.gov/trademark/trademark-updates-and-announcements/record-trademarks-customs-and-border-protection-cbp) and certain
evidentiary presumptions (15 U.S.C. §1115).
4
National Collegiate Athletic Association, NCAA, http://www.ncaa.org
5
2014-15 NCAA Division I Manual, NCAA, 1 August 2014, last viewed on 23 April 2015,
http://grfx.cstv.com/photos/schools/locl/genrel/auto_pdf/2014-15/misc_non_event/2014-15-ncaa-division-1-manual.pdf
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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 preSuper 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
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6
7
USPTO Serial No. 85/402,627
USPTO Serial No. 85/839,336.
8
M Sessler, ‘Marshawn Lynch won't be fined for 'Beast Mode' hat’, NFL, 4 February 2015, last viewed on 23 April 2015,
http://www.nfl.com/news/story/0ap3000000468199/article/marshawn-lynch-wont-be-fined-for-beast-mode-hat
9
See, e.g., California Civil Code § 3344; New York Civil Rights Law § 51,; Florida Statutes § 540.08,
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gel violated his right of publicity.10 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.
More recently, in 2013 Johnny Manziel brought suit against two different t-shirt manufacturers for selling tshirts 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.13 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.
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10
Hirsch v. S.C. Johnson & Son, Inc., 280 N.W.2d 129 (Wis. 1979), last viewed on 23 April 2015,
http://www.leagle.com/decision/197946990Wis2d379_1438.xml/HIRSCH%20v.%20S.%20C.%20JOHNSON%20&%20SON,%20INC.
11
JMan2 Enterprises, LLC v. Doolan, Case No. 6:13-cv-00215 (E.D. Tex.), last viewed on 5 May 2015,
http://dockets.justia.com/docket/texas/txedce/6:2013cv00215/142895 , and JMan2 Enterprises, LLC v. Vaughn, Case No. 6:13-cv-00158 (E.D.
Tex.)., last viewed on 5 May 2015, http://dockets.justia.com/docket/texas/txedce/6:2013cv00158/142512
12
U.S. Trademark Law, Federal Statutes, 15 U.S.C. §§ 1051 et seq., USPTO, 25 November 2013, last viewed on 5 May 2015,
http://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf
13
U.S. Trademark Law, Federal Statutes, 15 U.S.C. § 112(a), USPTO, 25 November 2013, last viewed on 5 May 2015,
http://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf
14
Abdul-Jabbar V. General Motors Corporation 75 F3D 1391 (9th Cir. 1996), 12 September 1995, decided on 8 February 1996, last viewed on 23
April 2015, http://openjurist.org/75/f3d/1391/abdul-jabbar-v-general-motors-corporation
15
‘ Jordan v. Jewel Food Stores, Inc., 1:10-cv-00340 (N.D. Ill), http://rightofpublicity.com/pdf/cases/jordanVJewel.pdf
16
John Facenda, Jr. v N.F.L. Films, Inc. NO. 06-3128, (E.D. Pa 2007), http://www.paed.uscourts.gov/documents/opinions/07D0548P.pdf
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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.
CONCLUSION
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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17
‘Paris Convention for the Protection of Industrial Property’, WIPO, 28 September 1979, last viewed on 23 April 2015,
http://www.wipo.int/treaties/en/text.jsp?file_id=288514
18
‘Madrid- The International Trademark System’, WIPO, last viewed on 5 May 2015, http://www.wipo.int/madrid/en/
19
‘Route to registration’, Office of Harmonization in the Internal Market, last viewed on 5 May 2015, https://oami.europa.eu/ohimportal/en/route-toregistration
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