Colin Kaepernick’s “Intent to Use” trademark filing explained
ESPN once again published another article about an athlete seeking to protect his trademark rights in the United States. I have written about this topic before. More than a few times – to be precise. I still maintain that these “athlete trademarks” are getting absurd. Colin Kaepernick, however, is a substantially different athlete in terms of branding and awareness and overall newsworthiness. Kaepernick’s company filed a series of new applications to register a particular mark on October 5, 2018 with the United States Patent and Trademark Office. This provides another good opportunity for an analysis of what trademarks are and how trademark registrations work.
More importantly, it allows for continued discussion on how “trademark” and “trademark registration” are entirely different things. Plus, another reminder of the fact that there is no such thing as a “trademark application.”
Football is back. College football season begins this week, with the NFL season opening with the traditional Thursday kickoff on September 6th, when the Philadelphia Eagles host the Atlanta Falcons. Every football season brings with it new rule changes and storylines. But this year brings a potential paradigm shift to how to the game is covered, discussed, and regulated. All because the Supreme Court struck down a 1992 law the prohibited most states from allowing sports betting.
I would be remiss in not emphatically stating here the following: sports betting is probably not legal in your state. Yes, the Supreme Court struck down the prior law, but this holding cannot be summarized as “SCOTUS legalized sports betting.” That would be dangerously inaccurate. Instead, the important takeaway from Murphy v. National Collegiate Athletic Association, 138 S. Ct. 1461 (U.S. May 14, 2018) is that the federal government cannot regulate gambling nationwide. This is an issue to be determined on a state-by-state basis. Tenth Amendment. States’ Rights. That kind of thing.
What does this mean for you, the typical football fan watching the game from the comforts of home or at a sports bar with friends?
Last night, the Philadelphia Eagles defeated the New England Patriots to win Super Bowl LII®. By this point, the Super Bowl is more than just a football game. It is a literal spectacle, above and beyond the athletic competition itself. Not only do viewers get exposed to the glitz and glamour of the biggest game of the season, but there is also an extra-long halftime special. Not to mention the heavily-discussed commercials. Often, marketing firms will hire celebrities to appear in these commercials to add a little extra pizzazz. Of course, these celebrities usually agree to appear in these advertisements beforehand, with full knowledge that their likeness is being used for commercial gain. This year’s Super Bowl went a step further.
Prince, Martin Luther King, Jr., and Kurt Cobain are some of the most iconic individuals in American history and pop culture. They were also fiercely protective of how their names and images were used when they were alive. Today, their respective estates or other third-parties control how their “publicity rights” and how their likenesses are marketed. Yet somehow each of these three were all featured in different ways during the Super Bowl telecast, often in direct contrast to how they would have presented themselves during their lifetimes. How is this legal? I will try to address this interesting cross-section of trademark, copyright, and publicity right issues here.
In January 2015, in Davis v. Electronic Arts Inc., the United States Court of Appeals for the Ninth Circuit held that the makers of the extremely popular Madden NFL video game series could not overcome former players’ claims for violation of publicity rights by claiming First Amendment protections. Electronic Arts Inc., the Defendant and the maker of the game, eventually appealed to the United States Supreme Court on grounds that they are essentially being penalized for making a game that is “too realistic” and life-like. An emboldened use of the “we are just too good at our jobs” defense, perhaps?
On Monday, March 21, 2016, without any further commentary, the Supreme Court denied EA Sports’ petition to hear the appeal. Procedurally, this is called a denial of certiorari, and it means that the Ninth Circuit’s verdict remains the final judicial determination on the issues presented. Colloquially speaking, and while maintaining the proper sports metaphors, this means the Supreme Court punted.
But what really is the issue here? Where do publicity rights end and the First Amendment begins? Why does EA Sports contend that it has no obligation to pay retired professional athletes for the use of their images and likeness rights?
On Sunday, February 7, 2016, the Carolina Panthers® and Denver Broncos® will take the field for the kickoff of Super Bowl® 50. This is the annual showcase game for the National Football League®. In the interim time, the NFL® has assembled an army of lawyers that are ready, willing and able to send a bevy of cease-and-desist letters to any individual or entity that has the audacity to use certain terms or phrases that the league perceives might dilute or infringe famous trademarks that belong to the NFL.
The Super Bowl is practically an American institution, now in its fiftieth year. Many groups contend that the Monday after the Super Bowl should be a national holiday. In fact, a formal petition was once initiated for that very purpose. As a result, you will see and hear numerous advertisements leading up to the Super Bowl promoting numerous goods and services. It is kind of a big deal. What you are unlikely to hear in these advertisements, however, is quite noteworthy. You will rarely hear any advertisement use the term SUPER BOWL.
Why are we reduced to using nebulous terms like “The Big Game” or “The Pro Football Championship” to identify and describe a game? Why is the NFL so trigger-happy in seeking to stop all uses of “Super Bowl” that are not made by direct sponsors of the league or the television broadcast? What is the legal basis for the NFL’s position on this matter? Is it possible that the NFL is wrong? (Spoiler alert: YES!)
On January 12, 2016, the National Football League approved by near unanimous vote the re-location of the Rams from St. Louis to Los Angeles. Los Angeles has not been home to an NFL team since the Rams and the Raiders both left after the 1994 season. In addition to the Rams, the San Diego Chargers also have the option to move to Los Angeles before the 2017 season, which seems likely. The Los Angeles Rams are back in business. NFL Hall of Fame running back (and fellow SMU Mustang!) Eric Dickerson seems pleased with the news:
Not surprisingly, the Los Angeles Rams Football Company, by way of the St. Louis Rams LLC, has already taken steps to ensure that the LOS ANGELES RAMS trademark rights are active and the federal registration has been renewed. But there remain other trademark issues that arise from this news of relocation.
Two trademark applications have recently caught my attention. Both involve NFL players and their offhand comments that have become accidental catchphrases. I highlight these two as a means of underscoring the recent trend among athletes to seek to register trademarks of all kinds. Most of these marks, unfortunately, have limited commercial value and a short lifespan for relevance among the consuming public. While I am a champion for protecting your trademark rights, these two particular applications strike me as nothing short of absurd.
Please allow me to explain…
Remember a couple weeks ago when the Washington Redskins submitted a laundry list of registered trademarks that its counsel contended were offensive or disparaging? And remember when that same week the makers of “Nut Sack Double Brown Ale” beer were granted a federal trademark registration over similar objections? You should – I wrote it on the paper.
Now another beer maker has been granted what I will call a questionable trademark registration. One that I am sure would have been listed right at the top of the Washington Redskins’ bad name list. LEFT NUT BREWING COMPANY is now a federally registered trademark. Really. On November 13, 2015, the Trademark Trial and Appeal Board reversed the decision of the trademark examining attorney and granted the registration.
I am sure that Daniel Snyder is handling this news with calm, cool reflection. Or whatever the exact opposite of that is.
On Thursday, November 12, 2015, Texas A&M University filed suit against the NFL’s Indianapolis Colts alleging infringement and dilution of its various “12th Man” trademark rights. If this sounds familiar or redundant, remember that A&M previously sued the NFL’s Seattle Seahawks for unauthorized use of the same trademarks nearly a decade ago. A&M eventually settled that matter with the Seahawks, with the NFL franchise agreeing to pay a license fee to A&M. The actual terms of that license and settlement were never made public and Seattle continues to use variants of the “12th Man” name today.
Last week, counsel for the Washington Redskins submitted a lengthy brief to the Fourth Circuit that, in part, provided a laundry list of other trademarks that have been registered by the USPTO and were implicitly deemed not to be immoral, scandalous, disparaging or otherwise offensive. In a parallel but unrelated matter, the owners of the trademark for NUT SACK DOUBLE BROWN ALE – for a beer flavor, naturally – overcame a challenge to their mark and were granted a federal trademark registration.
These two decisions seem incongruous, but are they really? At the very least, I hope to see an episode of South Park where Cartman wears a Washington Redskins™ jersey while drinking a Nut Sack®-flavored drink.