Athletes filing for trademarks makes front page of New York Times and Saturday Night Live’s Weekly Update

The New York Times’  December 9, 2010 edition ran a front page story on athletes seeking trademark protection for their names, logos, or catchphrases with which they are identified.  << http://www.nytimes.com/2010/12/10/sports/10trademark.html?_r=2&ref=todayspaper >>

The story, entitled “Sports Stars Seek Profit in Catchphrases,” references recent trademark filings by the New York Jets’ Darrelle Revis and other NFL athletes like Terrell Owens, Michael Strahan and Jared Allen, as well as the NBA’s Manny Ramirez.   << http://www.USPTO.gov >>  The story reports that Darrelle Revis has applied for the trademark “Revis Island” for goods ranging from t-shirts, sweatshirts, sweat pants, hats, and other apparel items, and that Terrell Owens has applied for “I Love Me Some Me.” 

The New York Times story also notes that Chad Ochocinco has launched a business around his catchphrases like “Catch Me If You Can,” “Kiss da Baby,” and “Child Pleez,” offering t-shirts and women’s underwear featuring the phrases, but that he has not filed for trademark protections on these phrases.  The former Mr. Johnson does have a registered trademark for a COC design.  << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.11.1 >> As an aside, it’s probably not a good thing when a team’s receiving corp has the same number of reality shows as wins in a season, but at least for the Bengals’ receiving duo recognizes the importance of protecting their respective intellectual property rights. 

To be more precise, Owens applied for “I Love Me Some Me” in 2007, and is the owner of a finalized registration, not merely a trademark application.  << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.2.3 >>  “Revis Island” was applied for in early 2010, and has been published for opposition and is likely to be a finalized registration very soon as well.  <<  http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.3.1  >>  Michael Strahan has been the owner of the registered trademark “Stomp You Out” since 2008. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.4.1 >>  By way of comparison, check out the search results for the words Tiger Woods: <<  http://tess2.uspto.gov/bin/showfield?f=toc&state=4008%3A2tq643.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=tiger+woods&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query  >> or the results for Michael Jordan:  <<  http://tess2.uspto.gov/bin/showfield?f=toc&state=4008%3A2tq643.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=michael+jordan&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query  >>

The New York Times story also notes an interesting aspect to LeBron James’ arrangements with Nike, stating that Nike owns the rights to the name LeBron.  The story states that LeBron signed an agreement with Nike when he was 18, though it does not specify if that agreement is the one that granted the rights to the name LeBron to Nike.  It is hard to imagine that such an arrangement would be without a number of limitations to Nike’s claim to LeBron, as compared to LeBron’s ability to exercise his own rights in and to his name.  These distinctions could be based upon the distinction between the Right of Publicity and a the rights afforded by a trademark.  Nevertheless, Nike is the owner of a series of registered trademarks for the name “LeBron,” including  << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.6  >>  <<  http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.5  >> and  << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.4 >>

It is my experience that athletes (and other notable personalities) are sometimes almost forced to seek protection of this kind, as a component to establishing a foundation of intellectual property rights that can prevent unauthorized and infringing uses.  A substantial market exists for products associated with famous personalities, whether they are officially licensed or are infringing products.  Trademark registrations can be a useful complement to the Right of Publicity in such instances.

The TLL Daily Advisor of December 10, 2010 picked up on the New York Times story in its summary entitled “Missing the Mark.”  They noted that the New York Times‘ coverage failed to point out that part of the benefit to an athlete in seeking trademark registrations is that the business surrounding that mark then belongs to the athlete, not the team, league, or players’ association. << http://www.tlldailyadvisor.com/ >> The TLL Daily Advisor states “Generally, if another entity (say a team) uses a phrase or image before the player applies to protect it, the first user gets the rights.”  Actually, there is a lot more to the process than “first to file.”  While some other countries follow the first to file approach, the U.S. system usually considers the propriety of the party seeking registration.  I think most would agree that this is the better system, preventing opportunistic prospecting of marks by would-be infringers.  One is reminded of the cybersquatting frenzy that took place in the 1990s and early 2000s, where the first one to apply for a domain name like “HumphreyBogart.com” would be the one to get it.  See the National Arbitration Forum decision in that domain dispute here: << http://www.adrforum.com/domains/decisions/144631.htm >>

The TLL Daily Advisor also correctly notes that the business involving the trademarks associated with an athlete will generally direct the cash flow and control over use to the player directly, bypassing the players’ association that might otherwise administer and control commercial uses of a player.  I think that the players associations of most leagues generally do a good job and provide a service to its constituency overall.  That said, one only needs to look at recent cases such as the retired NFL players class action suits against video game manufacturers and the players associations to see that isn’t always the case.  Here is my blog analyzing the award of $29 million to a class action of retired NFL players in a suit against a video game manufacturer: << http://rightofpublicity.com/analysis-of-the-29-million-jury-award-to-retired-nfl-layers >>  Also see: << http://rightofpublicity.com/john-maddens-opportunity-to-speak-on-behalf-of-retired-players >> 

The TLL Daily Advisor article also notes that these issues could raise a Right of Publicity issue, but concludes that it “could be a very gray area.”  I’m not sure it really is all that gray, but there certainly is a need for practitioners who are experienced with the ins and outs of this area of the law and the business surrounding it.  There isn’t a lot of them because it is difficult to get clients, and equally hard to get on the “inside” of the deals and opportunities that famous personalities enter into or have available to them. 

To conclude on a light note, I noticed that on December 11, 2010, Saturday Night Live got in on this coverage during Weekly Update with Seth Myers.  Myers states that Revis is seeking a “copyright” for Revis Island, Terrell Owens has applied for “I Love Me Some…” and Michael Strahan has “Stomp You Out,” setting up a Brett Favre punch line based on one of Al Pacino’s famous lines from Scarface.  I’ll give Seth Myers a break for mistakenly saying “copyright” instead of “trademark.”  He’s certainly not the first anchor or reporter to use these legally distinct terms interchangeably.  I wrote a lighthearted comment on this phenomenon in Res Gestae, the magazine of the Indiana State Bar, entitled “Tradewrongs:  Adventures in un-Intellectual Property.”  Here is a link to that article: << http://www.luminarygroup.com/Press_Center/Articles/ResGestae_2004-10.pdf >>