One of the most lucrative assets a professional athlete has is brand creation.  Professional athletes can establish their self-made brands by playing for prominent teams that, in turn, provide them the opportunity to receive sponsorships and other forms of media exposure.  An increasingly common and important method for protecting an athlete’s brand is by obtaining a formal trademark for their names, logos and even catchphrases.  Of course, as with virtually all legal tools, one must proceed with caution.  People’s perceptions of what a trademark protects are not always accurate.  If an athlete hopes to discourage would-be infringers, or to increase the chances of recovering an actual infringer’s profits generated from the unauthorized use of a protected mark, obtaining a trademark may or may not be the best vehicle to achieve these goals.

What Is a Trademark?

A trademark is a word, phrase, logo or other graphic symbol that providers of goods use to distinguish their goods from the goods of others by identifying themselves as the source of the goods.  In the sports world, typical examples of trademarks include an athlete’s name or a sports team’s name or logo.  A trademark can protect professional athletes and owners from other people using their marks in ways that are likely to confuse the public as to where a particular product bearing that mark came from.  For example, a common sports trademark is a team logo.  Mostly all professional teams trademark their logos.  This prevents unauthorized parties from creating products that exploit the team’s logo in a way that makes the public think that the team officially authorized or made the product.

The Specter of Functionality

A particularly limiting principle of trademark law – of which most people are not aware – is the “functionality doctrine.”   This doctrine prevents trademark protection from being extended to functional features of a product.  Qualitex Co. v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995). A product feature will be considered functional if it is essential to the use or purpose of the product, or if it affects the cost or quality of the product.  Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 771 (1992). Understanding the functionality doctrine is important because it may prevent certain aspects of a product from receiving trademark protection.  Professional athletes and owners should be fully aware of how their particular jurisdiction applies the functionality doctrine because different states apply the doctrine differently.

Some states, such as New Jersey, Texas and Ohio, adopt a more narrow view of functionality, making them friendlier to trademark owners because they provide more trademark protection.  These states apply the “competition theory” in determining whether a product feature is functional.  Under this theory, a product feature is considered functional if it would inhibit a competitor from succeeding in the marketplace. See Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 641 (6th Cir. 2002).

Conversely, other states, such as California, Arizona, Washington and New York, adopt a broader view of functionality, making them less friendly to trademark holders.  These states apply the “identification theory,” or “aesthetic functionality” doctrine, to analyze functionality.  Under this theory, trademark law only provides protection for a very narrow range of designs.  Any features that go beyond merely identifying a source or sponsor are functional and therefore not trademark protected.   Stated differently, the identification theory describes an attempt to classify some visually attractive or aesthetically pleasing feature design as “functional” and therefore free for all to copy and imitate. International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.1980).

The ‘Aesthetic Functionality’ Doctrine

There is some debate about whether the “aesthetic functionality” doctrine still applies in California and other states within the Ninth Circuit Court of Appeals.  (The Ninth Circuit encompasses California, Oregon, Washington, Arizona, Nevada, Idaho, Montana, Alaska and Hawaii.) In International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.1980), the plaintiff, a women’s organization, sued the defendant for trademark infringement based on the defendant’s manufacture and sale of jewelry that used the plaintiff’s trademarked insignia.  The Ninth Circuit held in favor of the defendant, finding that the defendant’s use of the plaintiff’s insignia did not constitute trademark infringement because “[t]rademark law does not prevent a person from copying so-called ‘functional’ features that constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.”

Earlier this year, in Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011), the Ninth Circuit relied heavily on Job’s Daughters in finding in favor of a company that sold “Betty Boop” dolls, t-shirts and handbags without authorization from the purported owner of the “Betty Boop” trademarks.  On February 23, 2011, the Ninth Circuit declared that the allegedly unauthorized use of the “Betty Boop” name and image was “functional” because the name and image were used not to indicate the source or origin of the products at issue, but rather for the purpose of “Betty Boop’s” commercial appeal to consumers.  The court reasoned that because the “Betty Boop” image and word mark were themselves the actual benefit that consumers sought to purchase, the defendant’s production of goods with the image and word mark did not constitute a trademark use. Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011).

Interestingly, neither party had cited Job’s Daughters in their briefs to the Ninth Circuit, presumably because the holding in Job’s Daughters had been significantly undermined by a later Ninth Circuit case, Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006), which essentially discredited the doctrine of “aesthetic functionality” altogether. The Fleischer court not only declined to distinguish Au-Tomotive Gold in its original opinion, it failed to even cite the case, leaving trademark owners to wonder whether the court intended to implicitly limit or event partially overrule Au-Tomotive Gold, and thereby restore the aesthetic functionality doctrine in the Ninth Circuit.

On August 19, 2011, however, the court withdrew its February 23, 2011 opinion and vacated the district court’s denial of the plaintiff’s trademark infringement claim, remanding the matter for further consideration.  In doing so, the court found that there was insufficient evidence on the record to prevent the plaintiff from bringing trademark claims over the word mark “Betty Boop.”  Interestingly, the new opinion omits all discussion of the “aesthetic functionality” doctrine or the Job’s Daughters case, leaving open the question of whether trademark owners should proceed with caution when dealing with potentially “functional” aspects of their marks.  Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 2011 WL 3633512 (9th Cir. 2011).

What Does This Mean for Professional Athletes?

It is important for pros and owners to know how their trademarks will protect them.  Unauthorized users can often use functional product features so as long as the public does not believe the products came from the teams or players themselves.  In effect, unauthorized users can profit off of the goodwill that teams and athletes strive so hard to create.

Pros and owners should make sure they understand how their trademarks actually protect them.  To understand how their trademarks can actually protect them, pros and owners should keep two things in mind.  First, they should know their jurisdiction.  Only then will they know what laws apply to their trademarks.  Second, they should understand their jurisdiction’s view on trademark protection.  Is it friendly or not?

In doing so, pros and owners protect themselves against leechers, the people who make quick and easy profits off their hard work and goodwill.  Although trademarks are not all-powerful, they have their uses.  And understanding how to use them is the key.