Trademarking Athletes' Names and Slogans

So this isn't a new thing. But the latest rash of athlete applicants shows that it is happening more and more frequently.

Protecting the Brand

What are the reasons behind this growing trend? At the most basic level, it's about brand management. Today's athletes are not just players. They are popular cultural products in their own right, wholly separate from the sport entertainment product they help produce, and greater than the sum of their stat lines and win-loss ratios. Athletes' brands comprise not just on-field performance, but also off-the-field activities ' endorsements, social media interaction, community relations and fan connection, political statements and involvement, charitable work and social welfare pursuits, business endeavors (including reality television and acting gigs) and overall behavior.

As with any other brand, promotion and protection are key parts of athlete brand management. Promotion increases value, and ideally, produces revenue for the athlete. This revenue can last long after an athlete's on-field career, especially given how short athletic careers can be. Protection means excluding others and preventing harm to the brand through dilution or disparagement. But to promote and protect, it is important to own and control. That's where trademark law comes in.

It's fundamental that a trademark is any word or symbol that indicates the exclusive source or origin of goods or services (see 15 U.S.C. ' 1127). Its purpose is to aid consumers in differentiating products and to protect producers' investment in reputation. The range of what can be trademarked is broad and includes names, words, letters, numbers, logos, symbols, designs, images, even colors and sounds, as well as any combination of these.

The most easily identifiable part of an athlete's brand is his or her name. To get a trademark on a name, however, the athlete must show that it is “distinctive” and has acquired “secondary meaning.” That is, he or she must show that the consuming public associates the name with a particular person (the athlete), not just any person with that name, and that it identifies the athlete as the source of goods and services. Making this showing is not necessarily easy, but it can be fairly straightforward for well-known professional athletes whose names are connected to entertainment services (sports) and often merchandise.

An athlete's nickname, slogans and catchphrases can also be an important part of his or her brand. Like other words and phrases, these nicknames, slogans and catchphrases can also be trademarked, regardless of who comes up with them. Rod Smart's “He Hate Me” and Michael Strahan's “Stomp You Out” are mottos that became trademarks. Swimmer Ian Thorpe got a trademark on his nickname “Thorpedo,” as did MLB pitcher Randy Johnson on “The Big Unit.”

Thus, trademark law allows athletes to monetize and protect their brands through the words, logos, designs and symbols that define them. The comments of NBA player Anthony Davis capture these notions perfectly. When asked about his “Fear the Brow” trademark application, Davis reportedly identified the two motivations of promotion and protection: On the idea of obtaining the trademark, he said, “Who doesn't love money?” Further, he didn't want others “to try to grow a unibrow because of [him] and then try to make money off of it.”

Obtaining a Trademark

But the effort to obtain trademark protection in nicknames, slogans and catchphrases is not without difficulty. Generally, the first to use a trademark in connection with the sale of goods or services may become the owner. Doing so entitles the user to common-law trademark protections that are automatic but limited. One may also seek federal trademark registration on the basis of actual “use-in-commerce” or “intent-to-use” (see 15 U.S.C. ' 1051). With intent-to-use applications, the first applicant has priority over others, but rights vest only with use.

Because of these rules, problems can arise when an individual other than the athlete is the first to use the mark, or is the first to file an application to register the mark. This recently happened with “Linsanity” and “Tebowing.” At the height of the Linsanity and Tebowing crazes, each mark attracted about a dozen trademark applications ' neither Jeremy Lin nor Tim Tebow were first applicants ' and some individuals began selling T-shirts and other merchandise featuring the marks.

Fortunately, athletes in Lin's and Tebow's situation are not without recourse. The trademark law does not allow registration of marks that comprise a living person's name (except by written consent) or falsely suggest a connection to a person, living or dead (see 15 U.S.C. ' 1052(a), (c)).

But that strategy is not a cure-all. Like Lin and Tebow, NFL linebacker Terrell Suggs lost the race to the trademark office after he coined “Ball So Hard University” in referring to his alma mater. Without his name in the phrase, Suggs doesn't have the ' 1052 ace up his sleeve, and the trademark ownership battle continues.

Delay in seeking protection risks losing the trademark. For this reason, athletes have started to include intellectual property considerations in their brand management strategies earlier and earlier. Bryce Harper's near-immediate trademark application is a prime example. Other athletes have planned ahead: NBA player Harrison Barnes had a logo designed and filed a trademark application on his nickname “The Black Falcon” in 2011, while he was still playing basketball at the University of North Carolina. Drafted in 2012, and thus free from NCAA rules, Barnes can now build his brand using the mark.

Trademark Strategy

Experience has a few lessons for future athletes. First, develop a brand and obtain trademark protection beforehand. This approach avoids disputes with others who might try to squat on a nickname or slogan. Then act fast. Brand development can sometimes be unpredictable, as with an offhand comment that becomes a sensation. As Harper did, seek protection on these catchphrases as soon as possible, again to avoid disputes with squatters. And finally, don't give up, even having lost the race to the PTO. As Lin and Tebow show, athletes can use legal rules to reclaim marks that use their names or falsely suggest a connection to them.

If recent trends are any indication, athlete-related trademarking activity promises to keep increasing. Just one day after NFL linebacker Jonathan Vilma tweeted “Victory is Mine!” in response to the successful challenge to his suspension, T-shirts appeared with the phrase and his name. It remains to be seen whether Vilma seeks trademark protection as part of a brand management strategy. Given the stakes, he would be wise to do so.

This article first appeared in The Recorder, a sister publication of this newsletter.

Peter Perkowski is a partner in the Los Angeles office of Winston & Strawn, where he concentrates his practice on intellectual property litigation. He can be reached at [email protected].

In June 2012, Washington Nationals' rookie outfielder Bryce Harper responded to a reporter's ill-informed inquiry with this sardonic retort: “That's a clown question, bro.” The catchy phrase was a near-immediate sensation, becoming an all-purpose comeback that trended on Twitter and was even repeated by a U.S. senator to a journalist. By the following day, Harper's agents had already applied to obtain a trademark on the expression.

Harper's action is one of the latest examples of a growing trend: athletes seeking trademarks on nicknames, slogans and catchphrases. In just the past year alone, there were reports of attempts to obtain trademarks on “Linsanity” (Jeremy Lin), “Tebowing” (Tim Tebow), “Flying Squirrel” (Gabby Douglas), “Fierce Five” (U.S. women's gymnastics team), “Jeah!” (Ryan Lochte), “Unbelievably Unbelievable” (Robert Griffin III), “Fear the Brow” (Anthony Davis), “Man on a Mission” (Austin Rivers) and “The Black Falcon” (Harrison Barnes), in addition to Harper's “Clown Question.”

These are not the first sports personalities to turn to the U.S. (PTO) Trademark Office for trademark protection. The practice has a fairly long pedigree, dating at least to 1989, when NBA coach Pat Riley obtained a trademark on the term “three-peat.”

So this isn't a new thing. But the latest rash of athlete applicants shows that it is happening more and more frequently.

Protecting the Brand

What are the reasons behind this growing trend? At the most basic level, it's about brand management. Today's athletes are not just players. They are popular cultural products in their own right, wholly separate from the sport entertainment product they help produce, and greater than the sum of their stat lines and win-loss ratios. Athletes' brands comprise not just on-field performance, but also off-the-field activities ' endorsements, social media interaction, community relations and fan connection, political statements and involvement, charitable work and social welfare pursuits, business endeavors (including reality television and acting gigs) and overall behavior.

As with any other brand, promotion and protection are key parts of athlete brand management. Promotion increases value, and ideally, produces revenue for the athlete. This revenue can last long after an athlete's on-field career, especially given how short athletic careers can be. Protection means excluding others and preventing harm to the brand through dilution or disparagement. But to promote and protect, it is important to own and control. That's where trademark law comes in.

It's fundamental that a trademark is any word or symbol that indicates the exclusive source or origin of goods or services (see 15 U.S.C. ' 1127). Its purpose is to aid consumers in differentiating products and to protect producers' investment in reputation. The range of what can be trademarked is broad and includes names, words, letters, numbers, logos, symbols, designs, images, even colors and sounds, as well as any combination of these.

The most easily identifiable part of an athlete's brand is his or her name. To get a trademark on a name, however, the athlete must show that it is “distinctive” and has acquired “secondary meaning.” That is, he or she must show that the consuming public associates the name with a particular person (the athlete), not just any person with that name, and that it identifies the athlete as the source of goods and services. Making this showing is not necessarily easy, but it can be fairly straightforward for well-known professional athletes whose names are connected to entertainment services (sports) and often merchandise.

An athlete's nickname, slogans and catchphrases can also be an important part of his or her brand. Like other words and phrases, these nicknames, slogans and catchphrases can also be trademarked, regardless of who comes up with them. Rod Smart's “He Hate Me” and Michael Strahan's “Stomp You Out” are mottos that became trademarks. Swimmer Ian Thorpe got a trademark on his nickname “Thorpedo,” as did MLB pitcher Randy Johnson on “The Big Unit.”

Thus, trademark law allows athletes to monetize and protect their brands through the words, logos, designs and symbols that define them. The comments of NBA player Anthony Davis capture these notions perfectly. When asked about his “Fear the Brow” trademark application, Davis reportedly identified the two motivations of promotion and protection: On the idea of obtaining the trademark, he said, “Who doesn't love money?” Further, he didn't want others “to try to grow a unibrow because of [him] and then try to make money off of it.”

Obtaining a Trademark

But the effort to obtain trademark protection in nicknames, slogans and catchphrases is not without difficulty. Generally, the first to use a trademark in connection with the sale of goods or services may become the owner. Doing so entitles the user to common-law trademark protections that are automatic but limited. One may also seek federal trademark registration on the basis of actual “use-in-commerce” or “intent-to-use” (see 15 U.S.C. ' 1051). With intent-to-use applications, the first applicant has priority over others, but rights vest only with use.

Because of these rules, problems can arise when an individual other than the athlete is the first to use the mark, or is the first to file an application to register the mark. This recently happened with “Linsanity” and “Tebowing.” At the height of the Linsanity and Tebowing crazes, each mark attracted about a dozen trademark applications ' neither Jeremy Lin nor Tim Tebow were first applicants ' and some individuals began selling T-shirts and other merchandise featuring the marks.

Fortunately, athletes in Lin's and Tebow's situation are not without recourse. The trademark law does not allow registration of marks that comprise a living person's name (except by written consent) or falsely suggest a connection to a person, living or dead (see 15 U.S.C. ' 1052(a), (c)).

But that strategy is not a cure-all. Like Lin and Tebow, NFL linebacker Terrell Suggs lost the race to the trademark office after he coined “Ball So Hard University” in referring to his alma mater. Without his name in the phrase, Suggs doesn't have the ' 1052 ace up his sleeve, and the trademark ownership battle continues.

Delay in seeking protection risks losing the trademark. For this reason, athletes have started to include intellectual property considerations in their brand management strategies earlier and earlier. Bryce Harper's near-immediate trademark application is a prime example. Other athletes have planned ahead: NBA player Harrison Barnes had a logo designed and filed a trademark application on his nickname “The Black Falcon” in 2011, while he was still playing basketball at the University of North Carolina. Drafted in 2012, and thus free from NCAA rules, Barnes can now build his brand using the mark.

Trademark Strategy

Experience has a few lessons for future athletes. First, develop a brand and obtain trademark protection beforehand. This approach avoids disputes with others who might try to squat on a nickname or slogan. Then act fast. Brand development can sometimes be unpredictable, as with an offhand comment that becomes a sensation. As Harper did, seek protection on these catchphrases as soon as possible, again to avoid disputes with squatters. And finally, don't give up, even having lost the race to the PTO. As Lin and Tebow show, athletes can use legal rules to reclaim marks that use their names or falsely suggest a connection to them.

If recent trends are any indication, athlete-related trademarking activity promises to keep increasing. Just one day after NFL linebacker Jonathan Vilma tweeted “Victory is Mine!” in response to the successful challenge to his suspension, T-shirts appeared with the phrase and his name. It remains to be seen whether Vilma seeks trademark protection as part of a brand management strategy. Given the stakes, he would be wise to do so.

This article first appeared in The Recorder, a sister publication of this newsletter.

Peter Perkowski is a partner in the Los Angeles office of Winston & Strawn, where he concentrates his practice on intellectual property litigation. He can be reached at [email protected].