For many professional athletes, developing a recognizable nickname or catchphrase can provide off-field revenues. While "Revis Island" is not very popular with NFL wide receivers, New York Jets cornerback, Darrelle Revis, is betting that fans will want to buy clothing items with the increasingly popular catchphrase. Recently, Revis sought federal trademark protection for "Revis Island," applying to register the term for use on t-shirts, sweatshirts, sweatpants, hats, footwear, sleepwear and swimwear with the United States Patent and Trademark Office. Revis took this action in response to the growing popularity of the phrase, which had already begun showing up on unlicensed t-shirts and internet fan blogs.
Registration is not necessary to create enforceable trademark rights in the United States, where such rights arise only from the use of a mark "in commerce." Nevertheless, registration does provide some important additional benefits, such as enhanced remedies and a presumption of validity of the registered mark.
An "intent-to-use" (ITU) application is also available for marks not yet in use. If an "ITU" application is approved, the applicant has six months in which to provide proof of first use, at which point registration will be issued. The effective date of such registration will be the retroactive date of filing of the ITU application.
Prior to registration, applicants should give thought to the particular international class of goods in which they would like to register, since there are 45 classes for various goods and services, such as clothing, toys, etc., and a separate filing fee charged for each class. The description of goods or services offered in each class under the mark must also be accurate.
Seeking trademark protection for nicknames and catchphrases is not new, with Pat Riley trade-marking of the phrase "Three-Peat" in 1989 being one of the more famous examples. More recently, particularly with the popularity of reality television, athletes are increasingly seeking to extend their brand beyond the sports world and into the larger entertainment universe. Terrell Owens is a prime example of an athlete who is leveraging his popularity on the field into increased recognition off the field. In addition to authoring a children's book and starring in his own reality show on VH1, "The T.O. Show," Owens has registered and sought protection for "I Love Me Some Me" and "Getcha Popcorn Ready," as well as a logo for the initials "T.O."
Celebrities should be aware of the requirements for seeking trademark protection, and should attempt to seek protection for distinctive marks or phrases as early as possible, including through filing ITU applications, in order to secure their valuable intellectual property. This will preempt others from making first use in commerce of the same or a confusingly similar mark or filing applications for such marks. A good early example is Pistol Pete, the famous moniker of Pete Maravich, the great NBA legend, who obtained registrations for his nickname at the height of his career between 1970 - 1975 for basketball instructional services, apparel and basketballs.
Of course, a stranger who tries to use an athlete's own name or recognized moniker without consent will likely also run afoul of that player's right of publicity. Publicity rights are governed by state laws that generally prohibit using someone's name, likeness or image without permission for commercial advertising or promotional purposes. In many states, such as California and Florida (but not New York), publicity rights survive death for many years and can be a powerful weapon to shut down unauthorized nickname usage, where it can be established that a nickname is closely associated with a single player in the minds of the public. For example, in 1979, the Wisconsin Supreme Court found that the unauthorized use of "Crazylegs" —the popular nickname of Elroy "Crazylegs" Hirsch, who starred for the University of Wisconsin and University of Michigan in the 1940s and the Los Angeles Rams in the 1950s—violated Hirsch's publicity rights when used the name on women's shaving cream because that nickname clearly identified Hirsch even though Hirsch had been retired for over 20 years.
In addition to trademark protection and publicity rights, false endorsement advertising may be yet another avenue of recourse if the athlete can prove that unauthorized commercial use of his or her nickname or slogan creates a false impression to a substantial segment of the public that the athlete endorses or sponsors the offending party's goods or services, so as to deceptively influence consumers' purchasing decisions. False endorsement is a type of unfair competition that is actionable under both the federal trademark statute (Section 43(a) of the Lanham Act) and state laws.
While similar to a right of publicity claim, which is personal to the athlete regardless of whether the name is being used by the athlete commercially, a false endorsement claim requires proof of likelihood of confusion (similar to trademark infringement) as to sponsorship or endorsement. Thus, if the athlete is not actually using his or her nickname to sell goods or services in commerce, such a claim will not lie because the athlete can't establish protectable common law rights in an unregistered nickname or slogan. Defenses available in an unfair competition case —such as fair descriptive use of the name or, in cases of artistic portrayals, First Amendment protection—are not applicable to publicity claims. For example, in 2003 Tiger Woods lost a highly publicized case in which he tried to stop the use of his image in a painting of famous golfers because of a failure to have established any trademark rights on his image, versus his name, as required under the First Amendment. Nevertheless, all three bundles of rights—trademark protection, unfair competition/false endorsement and publicity rights—must be assessed when representing an athlete whose personal name rights have been violated.
Athletes, and all celebrities, should be aware of the requirements for seeking trademark protection and should seek protection for distinctive marks or phrases as early as possible to secure their valuable intellectual property and avoid others from trying to file applications for their marks.