What Do Athletes Need to Know About Registering A Trademark?

By Josh Gerben, Esq.

The world of sports is full of opportunities for trademarks: catchphrases, nicknames, slogans, and so on. Each of these types of words or phrases can become embedded in the consciousness of sports fans, making them prime candidates for merchandising. Those opportunities may bring with them groups of individuals or businesses who wish to try and profit from the popularity and originality of an athlete who has developed his or her own unique phrase or nickname, by selling shirts, hats, sports equipment, or other merchandise that features the athlete’s identifier on it. With a registered trademark, however, an athlete can protect their claim to their own mark, ensuring that they (or those to whom they choose to license the rights) are the only ones who can benefit from their popularity.

Many athletes and sports figures have registered federal trademarks for catchphrases or other terms associated with them – Pat Riley’s “three-peat” is one of the most well-known examples of a trademarked sports phrase, and many other popular sports terms are registered federal trademarks as well: Reggie Jackson’s “Mr. October,” for example, or “Revis Island” for Darelle Revis. It isn’t always a smooth road to trademark registration for athletes, however. The following information will tell you more about why you should strongly consider registering a trademark for your catchphrase, and some facts to know before you do so.

Be sure that you can actually trademark the name or phrase associated with the athlete.

In order to qualify for trademark protection of a trademark there must be an actual product or service behind the trademark.  Therefore, a famous athlete can not just trademark his or her name or catchphrases unless it is associated with a product (e.g. clothing) or service (e.g.  a restaurant) associated with athlete’s name or catchphrase.   In addition, sometimes athletes find that their names or catchphrases are already innocently registered by someone else.  Therefore, a thorough trademark research process can help ensure that someone else hasn’t already registered your mark, and that the mark you wish to register won’t be considered confusingly similar to an existing one in the eyes of the United States Patent & Trademark Office (USPTO). A trademark attorney will be better able to advise you on the likelihood of confusion, and will be able to more thoroughly research the existing marks that are already out there to give you a better chance of a successful registration.

Register your trademark promptly.

Johnny Manziel and Jeremy Lin are two athletes who ran into surprising situations when they tried to register their famous “Johnny Football” and “Linsanity” nicknames (as well as other marks) recently: other applications for those same marks were already pending. This was clearly not a case where someone else had the same name; rather, enterprising if ill-intentioned individuals were attempting to reserve the rights to those names before the athletes themselves could, in hopes of profiting either by selling merchandise or demanding a fee for the rights to the mark. There is no shortage of similar individuals out there who will attempt to trademark a nickname or phrase as soon as they think it may gain traction. For this reason, it’s important as an athlete to register your own mark as soon as you think you – or anyone else – may want to use it on merchandise or for any other method of profit.

One point to note: both Manziel and Lin were able to appeal to the USPTO on the grounds that those marks were strongly associated and identified with them, and eventually the other trademark applications were rejected. It is still best, however, to stay on the safe and proactive side by registering your mark as soon as possible.

Use your trademark properly.

Once you’ve registered your mark, you’ll be able to use it in with the circle “R” trademark registration symbol, indicating that you are its rightful owner. Ensure that any merchandise sold using the mark includes that symbol, and also be sure to stay aware of any illegally or illicitly sold goods that may infringe on your mark as well. If your mark becomes generic or widely used without your policing it for proper use, you may lose your rights, or have them severely narrowed. Pat Riley’s “three-peat” is one that could easily have become genericized by other teams or individuals who won three consecutive championships, but Riley and his lawyers actively and vigorously policed the mark, protecting his rights.

Be sure to submit your trademark application correctly.

Your trademark application is a detailed legal document. You need to be thorough and accurate in completing your application, otherwise you may not gain the full extent of the rights you sought. For instance, if you register your mark only for use on apparel, but not in, for instance, video games, a video game designer may be able to include your nickname or catchphrase without your permission and without the rights to it. You lose out on an opportunity for profit, and you also run the risk of diluting your mark through improper use. A trademark attorney can assist you in all areas of your application, from research through to trademark monitoring, ensuring that you gain all the rights you desire, and that they remain protected.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.