Trademark Law: “Brand” Protection For Professional Athletes
By Justin M. Jacobson, Esq.
Today more than ever, a professional athlete must be aware of how their “brand” is publicly viewed and protected. This new focus on a player’s off-the-field business has caused many professional athletes from various sports to properly protect and monetize their actual name as well as any publicly associated catchphrases, nicknames or slogans. Many athletes are also creating their own charities, athletic training camps and separate businesses that all require proper brand protection as well. This desired protection is generally achieved through the use of trademark law. A trademark registration provides the owner with the exclusive right to use a particular name or logo (trademark or service mark) to differentiate the goods or services that the owner provides from those of another. Trademark protection applies to a word, phrase, logo, sound, design or a combination of these, used in relation to a particular good or service.
In the professional sports world, trademark protection may apply to the athlete’s actual legal name, a unique logo, a nickname, a catchphrase or a business name used for an ancillary project in relation to specific good or service. In fact, numerous professional competitors have protected their legal name for a variety of products. These include “Michael Jordan” (U.S. Reg. No. 1,487,719) for “promoting the goods and/or services of others through the issuance of product endorsements,” owned by former NBA player, Michael Jordan; “Donovan McNabb” (U.S. Reg. No. 2,872,135) for “clothing” and “entertainment services in the nature of personal appearances by a professional football player,” owned by former NFL player, Donovan McNabb; and, “Tiger Woods” for “golf shirts, golf shoes, hats, jackets, shirts” and “golf clubs, golf gloves, golf tees” (U.S. Reg. 2,306,354) and for “computer game software featuring golf” (U.S. Reg. No. 2,281,652), owned by professional golfer, Tiger Woods.
In addition to a professional athlete protecting their actual legal name, many individuals have also registered their nickname for a specific good or service. Some examples are former NBA Player Earvin Johnson, who owns “Magic Johnson” (U.S. Reg. No. 3,237,937) for sports commentary and for “personal appearances and speeches by a sports celebrity”; NBA player Jeremy Lin, who owns “Linsanity” for “clothing” and “cups and mugs” (U.S. Reg. No. 4,908,965); and, former MLB player Reggie Jackson, who owns “Mr. October” (U.S. Reg. No. 2,594,621) for clothing, posters, and baseballs.
Another category that many athletes apply for protection is in any catch-phrases or slogans publicly associated with them or made by them. For example, “Revis Island” (U.S. Reg. No. 4,407,286) is owned by NFL player Darrelle Revis for “t-shirts” and “hats”; “Fear The Brow” is owned by NBA player Anthony Davis for clothing and footwear (U.S. Reg. No. 4,660,490); “Turn 2” is owned by former MLB player Derek Jeter for baseball bats, baseball gloves, clothing, and footwear (U.S. Reg. No. 2,220,779); and, Bart Scott’s iconic “Can’t Wait” (U.S. Reg. No. 4,247,527) is owned by the former NFL player for various types of clothing and athletic apparel.
A professional athletic competitor may also apply for protection for any athletic or sports training camps or facilities that they may create as well as any charities or other fundraising organizations owned or operated by the player. For example, former Olympian, Michael Johnson owns “Michael Johnson Performance” (U.S. Reg. No. 5,021,771) for “training services in the field of sports performance” and for “physical fitness consultation and instruction.” Additionally, “Jared Allen’s Home 4 Wounded Warriors” (U.S. Reg. No. 4,797,682) is owned by NFL player, Jared Allen and is for charitable services and for fundraising. “Tiger Woods Foundation” (U.S. Reg. No. 3,611,696) is owned by professional golfer, Tiger Woods and is for “charitable fundraising” and “charitable services.”
Many players today have expanded their “brand” into other non-athletic areas, such as unique clothing lines and other products. This includes former NFL player, Marshawn Lynch’s “Beast Mode” for “t-shirts” (U.S. Reg. No. 3,650,781), “sweatshirts,” and “headwear” (U.S. Reg. No. 4,254,213) as well as current MLB player, Marcus Stroman’s “Height Doesn’t Measure Heart” brand, which is registered in both the United States (U.S. Reg. No. 4,667,122) and in Canada (TMA941,704) (as he currently plays for the Toronto Blue Jays). Finally, a unique player logo such NFL player, Tom Brady’s “TB12” logo is protected for “clothing” (U.S. Reg. No. 3,642,708) and “foam exercise rollers” (U.S. Reg. No. 5,470,520). Several athletes have also created their own unique “branded” restaurants and culinary products, such as “Elway’s” (U.S. Reg. No. 3,387,376), owned by former NFL player, John Elway; “Arnold Palmer” (U.S. Reg. No. 3,11,3028) for “wines,” owned by former professional golfer, Arnold Palmer; and, “Michael Jordan’s Steak House” for a “restaurant” (U.S. Reg. No. 3,627,000) owned by former NBA player, Michael Jordan.
In some instances, the athlete may even license their trademark to a third-party, who actually manufactures and sells the product bearing the professional’s name. For instance, “Michael Jordan” (U.S. Reg. No. 3,539,462) for “perfumes and fragrances” and “deodorants” has been licensed to a third-party for distribution. This is also true for various sporting apparel companies such as Nike, Adidas, and Under Armour, who may receive a license to utilize an athlete’s protected intellectual property for a particular good. This includes utilizing the player’s imagery on clothing, hats, sports equipment or any other merchandise that features the athlete’s identifier on it.
A registered trademark provides the owner with certain protections. Some include the right to monitor and prevent any potential infringers who are utilizing their protected mark without permission. This imposes a duty on the mark’s owner to police any counterfeit or otherwise infringing goods and take necessary steps to stop their sale. Some of these steps include reporting the infringing goods to the relevant authorities, including the U.S. Customs and Border Patrol, as well as sending appropriate notices to any potentially unauthorized parties. In some cases, it may involve filing an actual infringement lawsuit. A valid registration in a mark also permits the registrant to file an infringement claim with various social media platforms, including Facebook, Twitter, Instagram, Twitch, and YouTube, to retrieve or block the infringing account. It also enables the owner to utilize the ICANN domain dispute resolution system to recover any infringing website domain names.
Finally, in addition to applying for protection in the United States, for any athletes that compete on a world stage and in other countries, there are a variety of international considerations. Since each country has their own unique trademark rules, it is prudent to review and apply for registration in any country that the athlete is selling its product in. In particular, professional athletes who play in Canada, such as NBA players on the Toronto Raptors can apply for Canadian trademark protection in addition to protection in the United States to police against any infringers in both countries.
Overall, a professional athlete can utilize trademark law to expand, protect and manage their own personal “brand.” This includes controlling how their actual name, nickname and any catch-phrases are monetized. As the global sports economy continues to increase and more athletes look for and create their own business opportunities off the field, the need for such brand protections is even greater.
This article is not intended as legal or business advice, as an attorney or other professional specializing in the field should be consulted.
© 2018 The Jacobson Firm, P.C.