What you can learn about trademarks from sports celebrities

March 12, 2015
Nicholas Wells
InsideCounsel

The world of sports seems to generate more than its share of words and phrases that catch the public’s attention. But these also show how branding — and formal trademark protection — can go awry.

Every time a sports announcer invents a new moniker for a star athlete, someone will say, “That’s great! He should trademark that!” But you can’t just “trademark” a word or phrase. You have to register it for specific goods or services that you plan to sell. If you don’t sell them, you can’t get the trademark.

Take Tim Tebow. His management company applied to register half a dozen applications for the word “tebowing” for all sorts of products. Except for clothing, however, none of them were registered because he didn’t actually sell them.

Bryce Harper tried to register “That’s a clown question, bro” for use on clothing. He paid to keep the application alive for three years, never selling anything. The trademark was never registered.

Then there’s Jeremy Lin. He applied for the trademark Linsanity for dozens of different products. That was in 2012. But he hasn’t started selling those products with the Linsanity brand on them. So he still doesn’t have a registered trademark.

Pat Riley’s company, however, has successfully registered the trademark “Threepeat” for several products that the company actually sells.

The strange exception to the rule is Usain Bolt. He was able to register trademarks for his name and “lightning bolt” pose without selling any products first. He did this by linking them to foreign trademark registrations. Because Bolt is a Jamaican, he receives some special privileges under trademark treaties.

Registering a trademark so you can put a phrase on a t-shirt will not work, either. A trademark must indicate to buyers that the product comes from a particular company or person. Many times people apply for a trademark on a phrase when they are selling goods imprinted with that phrase, but it does not qualify as a “trademark use”.

That is what happened when Johnny Gaudreau’s management company tried to register “Johnny Hockey” for T-shirts. It was refused because the way Johnny Hockey was used on the shirts was “merely ornamental” and not a trademark use. The same thing happened to Marcus Stroman. He tried to register “Height doesn’t measure heart” but ran into problems because he was not using the phrase on clothing as a trademark.

Boxing announcer Michael Buffer was more careful. His line of clothing has tags that show his famous phrase “Let’s get ready to rumble” as the maker of the clothing.

The takeaway here is that the person or company filing a trademark application must be selling a product that will use the trademarked language. If a trademark application is filed in the name of the wrong applicant, it can be declared void. The ownership usually cannot be corrected after filing.

Tim Tebow and Michael Buffer are examples of doing it the right way — using a management company that is set up to sell or license the trademark to others.

Jeremy Lin is the opposite case. He personally owns the application for Linsanity. That means that he has to sell or license products as an individual in order to avoid legal risks to his trademark rights. If he transfers the trademark to a company before he sells products, someone may have a basis to cancel his trademark.

Usain Bolt has done the same thing. He personally owns a number of trademarks for his name and for his famous “lightning bolt” pose. This limits his flexibility in developing business ventures in the future.

One of the funniest things about looking at famous sports phrases and names is seeing all of the people who jump at the chance to profit from someone else’s creativity. But whenever you try to protect a word or phrase that the public will see as a reference to a real person, you need permission from that person.

Linsanity provides another great example here. Jeremy Lin filed a trademark application for that term, but so did almost a dozen others. All of them were filed within a two-week period in February 2012. The examiners at the USPTO, though, do not live in a bubble. All of those applications were refused because the applicants could not provide a signed consent from Jeremy Lin to use a word that was clearly associated with him.

A squatter tried the same thing with Tebowing. None of his applications were allowed.

Perhaps the best example of this rule occurred when Barack Obama began to gain political prominence. More than 100 people filed trademark applications that referred to the name Obama, both praising him and attacking him. The only trademarks that actually were registered were owned by his campaign committee.

What in-house counsel can learn from sports celebrities is this: Trademarks, like any other kind of legal protection, require strategy and forethought in order to secure and use them to your advantage. Even among sophisticated business people, such as those advising sports stars, there is demonstrable confusion about how and why to register a trademark. When it comes to a company’s valuable IP, you definitely don’t want to succumb to Linsanity or make a tebowing mess of it.