Anyone who has ever played sports knows that there is just as much to learn from losing as there is from winning. The same could be said about a string of trademark applications made by professional athletes that were recently denied.
In August 2019, New England Patriots quarterback Tom Brady was refused trademark protection for the mark “Tom Terrific”, and in September, Los Angeles Lakers star Lebron James was refused protection for the mark “Taco Tuesday”. While these applications might easily be passed off as frivolous attempts by an athlete to garner attention, they are, as I identified in a previous article, part of a growing trend whereby athletes are strategically using trademarks to either establish, grow, or protect their personal brands. Interestingly, despite being denied by USPTO, the applications still ended up achieving what they were intended to do – provide greater certainty surrounding the use of a mark.
In the case of Brady, the USPTO refused the application for two reasons, both relating to former New York Mets pitcher Tom Seaver. First, for falsely suggesting a connection with Tom Seaver, and second, because the applied-for mark consisted of a name of a particular individual (Tom Seaver) who did not provide written consent. The refusal was due in large part because of a letter sent by Mets fan protesting the application. The letter included references from news articles, encyclopedias, and columns referring to Tom Seaver by the nickname “Tom Terrific”. The evidence in the letter helped the USPTO establish that Tom Seaver was sufficiently famous for purposes of a false connection.
In comment, Brady noted that, despite the stated intent of his application, he never actually wanted to use the trademark for commercial use. Brady, similar to Tim Tebow and his application for “Tebowing”, wanted to control the way the mark was used, specifically to distance himself from a nickname he didn’t want to be associated with. Regardless of the decision by the USPTO, Brady ultimately achieved what he had set out accomplish.
In James’ scenario, the application was refused because “Taco Tuesday” was a “commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment”. Again, despite the refusal, the application, according to a spokesperson for James, achieved exactly what it was intended to do – to get the U.S. government to recognize that someone cannot be sued for its use. Prior to filing, James had been using the term “Taco Tuesday” in a number of his Instagram videos showcasing his family’s taco nights. The videos quickly became a weekly internet sensation, eventually leading to an application that spanned several different services such as podcasting services, online entertainment services, and advertising and marketing services.
From a branding perspective, it is important for brands to have a clear brand vision and to be consistent in their messaging. Despite the refusals, the applications still provided greater certainty moving forward for these two athletes by allowing them to maintain a clear and consistent brand unhampered by uncertainty over use of use of a phrase, or concern about misappropriation. This strategy might be useful for any brand who might fear an undeserved association with a nickname or is concerned about what they can and cannot say. Ultimately, these refusals speak volumes about the benefits of applying for a trademark and showcase why not every application needs to be a successful one to achieve the desired outcome.
Written by Alexandre Dumais, IPilogue Editor and JD Candidate at Osgoode Hall Law School. Alexandre is also the Director of Sports, Osgoode Entertainment and Sports Law Association.
The athletes’ use of trademark applications to achieve their goal is problematic for the trademark registration process. Applicants traditionally file trademark applications to obtain monopolies for their marks. In contrast, the athletes are not using the application process to register marks, but to answer legal questions. By filing frivolous applications to answer legal questions, the athletes create additional work for the Trademark Office. If the athletes’ filing trend continues, then the extra workload may contribute to delays in the registration system. Consequently, an applicant with a genuine desire to register their mark will have to wait even longer to obtain their registration.
If athletes require greater legal certainty on their marks, they should find this through other means, such as by ordering a trademark search or seeking legal advice from qualified professionals.
Although the athletes applied to USPTO, this issue is also relevant to the Canadian Intellectual Property Office’s Trademark Branch (Branch), which is experiencing a significant backlog in the processing of applications. According to a recent audit on the Branch: “As of March 31, 2017, there were approximately 34,000 applications waiting to be assigned to an Examiner and issued a first action.” If the athletes’ trend spills over to Canada, then it will further add to this backlog. Therefore, this issue should be closely monitored in the future.