Stop the Insanity! Sports Trademarks Run Amok

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Sports and sports teams have a long history with intellectual property law and, more specifically, trademarks.  Sports teams, colleges, and universities have long trademarked their names and logos, and have routinely and aggressively enforced those rights.  In 1988 Pat Riley, then the head coach of the National Basketball Association’s Los Angeles Lakers, applied for a trademark on the term “three-peat” for shirts, jackets, and hats (U.S Reg. No. 1,552,980).  Subsequently, others have attempted to trademark various terms, such as baseball player Manny Ramierz trademarking the phrase ‘Manny Being Manny’.  In 2012, football player Robert Griffin III filed for seven trademarks: RGIII, RG3, Robert Griffin III, Unbelievably Believable, Go Catch Your Dream, Light You Up, Work Hard Stay Humble, No Pressure No Diamonds, and Dream Big Live Bigger.

The desire to seek trademark protection makes sense to generate additional revenue streams, particularly for athletes whose careers will likely be short relative to their overall lifespans.  Robert Griffin III, for example, has played in only 44 total NFL games, starting 40 of them, and was out of professional football entirely in 2017.  Similarly, teams – and particularly collegiate teams – derive substantial revenue from selling branding and marketing rights.  For example, Forbes estimates that the University of Alabama Crimson Tide’s football program has a value of $93 million and generates annual profits of $45 million on $77 million in annual revenue.

However, teams and players are starting to take their trademark protection to the extreme, and then some.  In March 2019, an eight-year long trademark battle waged by the University of Alabama against a painter came to an end.  The university alleged that the painter had infringed the university’s trademark rights when the painter created works of art depicting scenes of players in University of Alabama football games; the paintings depicted university football jerseys and logos.  The dispute was ultimately resolved in favor of the painter.

The University of Alabama is not alone in taking a highly aggressive stance towards trademark registration and protection.  Earlier this year “The” Ohio State University applied for a trademark registration on the word “the”, U.S. Trademark Application Serial Number 88/571,984.  The Ohio State University claimed use of the alleged mark “the” on clothing, namely t-shirts, baseball caps and hats and submitted a specimen of use depicting a t-shirt with the word “the” in block letters.  The United States Patent and Trademark Office (“USPTO”) rejected the application, advising that registration may be refused due to the existence of a prior-filed application (filed by an entity connected to the fashion designer Marc Jacobs) and finding that the specimen failed to function as a trademark and was merely ornamental.  The Ohio State University has said it will continue to pursue its trademark application.

On the individual athlete front, a number of athletes have sought to create personal brands and register trademarks, but maybe none as unusual as LeBron James and his attempt to trademark the phrase “Taco Tuesday”.  James sought to register “Taco Tuesday” for a number of goods and services, including downloadable audio/visual works, social media marketing, podcasting services, and online entertainment services.  The impetus for the application appears to be a series of Instagram posts made by James celebrating “Taco Tuesday”.  However, the Taco John’s restaurant chain registered “Taco Tuesday” in 1989, claiming a date of first use in 1979.  The USPTO rejected the application finding that “Taco Tuesday” failed to function as a mark as it is a commonplace message, citing to numerous newspapers showing that “the wording ‘Taco Tuesday’ is a ‘widely used message’ used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday…”  James has not stated whether he will continue to pursue his application.

There can be little doubt that trademarks can be a valuable asset for sports teams and athletes, providing additional revenue streams, prohibiting misuse of a team or player’s likeness, and allowing athletes to expand their star power beyond their chosen sport.  However, those benefits do not extend to frivolous filings and alleged marks that clearly fail to function as trademarks.  With the apparent increase in athletes seeking trademark protection for themselves and a variety of their marketing efforts it seems likely we will continue to see an increase in creative trademark applications.

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