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?
Trademark law is a nuanced discipline. Word choice matters greatly. The use of a particular word, a certain combination of words, the exact construction of a phrase, and/or the precise arrangement of particular terms – each of these can affect the validity and enforceability of a trademark. It is important.
Last week, I was in the middle of a trademark infringement trial in federal court. Opposing counsel colloquially referred to official certificates of registration as “trademarks” and the underlying applications as “trademark applications.” Each time I had to stand up and object. For one simple, yet legally necessary reason:
There is no such thing as a “trademark application.”
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!)
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.
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.
[originally published on October 13, 2015 at www.law-dlc.com]
As a sports fan, Monday, October 12, 2015 was a strange and turbulent day. USC fired Steve Sarkisian one day after asking him to take an administrative leave of absence (cue the employment lawyers). Steve Spurrier, the head coach of the other USC – South Carolina – suddenly walked away and called it a career in mid-season. Meanwhile, Texas Governor Greg Abbott congratulated the Astros on making the American League Championship Series when they were leading 6-2 in the eighth inning, only for the Royals to score five quick runs and turn me into a blubbering mess of a baseball fan. Someone in the governor’s office forgot about Yogi Berra and “it ain’t over ‘til it’s over.”
Yet the craziest sports story of the entire day might be something that happened over social media. In the mid-afternoon, the Twitter accounts for Deadspin (@Deadspin) and SB Nation’s GIF-based sub account (@SBNationGIF) were suddenly suspended. The initial reasons were murky, with media reports later suggesting that the National Football League used its influence with Twitter to suspend the accounts. And why? Because the Deadspin account and the SBNationGIF account both routinely posted or re-tweeted Vines and GIFs of highlight plays from NFL games. Which are copyrighted works.
[originally published on October 12, 2015 at www.law-dlc.com]
Trademarks are everywhere. Everything from a well-known slogan by a shoe company, to a famous organizational logo, to the signature color scheme or uniform of a performer can be considered as a trademark. Trademarks can take many different shapes and forms, each of which may be protected by U.S. law. The key is what can (or should be) protected and what may be enforced as the intellectual property rights of an individual or entity. U.S. trademark law allows for a multitude of ways to express yourself or identify your product to the consuming public. In fact, the law encourages this!