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Can you trademark your sports nickname?

Oct 19th, 2014 | By | Category: Trademark Litigation

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federal trademark on nickname

 

Introduction

Here is an intellectual property question that comes up every now and again – CAN I GET A TRADEMARK ON MY SPORTS NICKNAME or on a famous sports phrase I heard on TV like “Tebowing” or “Linsanity” and/or is it okay to register these domain names without fearing a federal trademark lawsuit?  These are very important questions.  There are many different types of people how might have an interest in getting federal trademark protection for their nickname, pen name, or stage name.  For example:

1.  Athletes (ex. golfers, baseball players, football and basketball players, tennis players)

2,  Real estate brokers and agents (California Bureau of Real Estate permits real estate brokers and salespersons to use nicknames in their business)

3.  Celebrities and entertainers (ex. actors and actresses, podcasters, web media personalities, social media bloggers, singers, guitar players, drummers, etc.)

4.  Attorneys (ex. “Attorney Steve”)

The purpose of a nickname is to have something catchy as a way people can remember your name (and in the case of athletes, to build a brand that may increase commercial value of the athlete).  It’s for example, to get to my website I don’t say go to “VondranLegal.com” (it’s no fun to try to spell that a couple hundred times a month), instead I just say go to “AskAttorneySteve.com.”  This makes it easier for my clients and potential clients to find and follow me online, using my nickname as guidepost..

Moving to people with bigger celebrities than the Attorney Steve brand, there are a handful of athletes and entertainers that have applied for, and received, federal trademark protection for their nicknames.  One of the most recent and popular examples comes from NFL football and the “Johnny Football” craze.

Example of athletes with trademarks in their nickname

Here is an example of one smart athletes who recognized the commercial value of his nicknames and sought federal trademark regstration:

1. Johnny Football

Johnny Football nickname trademark

As this mark suggests, his trademark covers:

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Clothing for athletic use, namely, padded elbow compression sleeves being part of an athletic garment; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for athletic use, namely, padded shorts; Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, base layers; Clothing, namely, neck tubes; Gloves as clothing; Headbands for clothing; Hoods; Infant and toddler one piece clothing; Jackets; Jerseys; Ties; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Wearable garments and clothing, namely, shirts; Women’s clothing, namely, shirts, dresses, skirts, blouses; Wrist bands; Wristbands,

Educational and entertainment services, namely, providing motivational and educational speakers; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Entertainment and educational services in the nature of competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; Entertainment in the nature of football games; Entertainment services, namely, participation in football games; Entertainment services, namely, personal appearances by a sports celebrity.

As you can see, his trademark attorney tried to capitalize on as much space as possible as far as trademark protection is concerned.  As Johnny Football teaches us, when you have something that’s hot, you protect it and try to commercially capitalize off it.  If you don’t, someone else probably will.  This includes buying domain names which in this case trying to buy JohhnyFootball.com would probably land you in either a UDRP domain name arbitration, or land you in federal court under the Anti-Cybersquatting Consumer Protection Act.

There are also sports “phrases” that catch on and become the subject of federal trademark applications.

Here are a few sports phrases that have become trademark applications due to the fact that many of these phrases have went “viral” online:

1.  Fear the brow (Anthony Davis)

2.  Man on a mission  (Rivers)

3.  Three-Peat / 3 peat (Pat Riley) – Note USC “Three=Pete” for Pete Carroll (rejected as too similar)

4.  Manny being Manny (Manny Ramirez baseball player)

5.  You cannot be serious (John McEnroe tennis player famous saying)

6.  Mr. October (Reggie Jackson for his baseball world series heroics)

7.  Earvin “Magic” Johnson (one of the best basketball players of all time)

8.  Sky hook (famous shot of Los Angeles Lakers Kareem Abdul Jabaar)

The list goes on and on and what’s happening is sports fans watch games online listening for they key phrases, then the register domain names and may start selling items online trying to capitalize off the famous sports slogan.  This creates a situation where cybersquatters then try to sell the domain name for a profit, raising a question of whether the athlete or their agents should file a UDRP domain name action, or just pay for the domain.  This is a question that should be run by your internet counsel.  We can review your UDRP case if you fill out the contact form below.

USPTO position on obtaining federal trademark protection for sports nicknames:

federally registered nickname

Trademark protects names, images, symbols, marks, nicknames and other marks that serve as an identifier for the source of goods or products.  As such, you nickname should be tied into a product or service you sell.  For example “Attorney Steve” is a nickname used to identify my legal products and services.  If you are an athlete, you may want to start a company and launch a website that sells t-shirts, hats, coffee mugs, and bumper stickers to your fans and followers.  This will help establish your need for a federal trademark to protect your nickname.

If you need help seeking trademark protection for your sports nickname, or sports catchphrase, contact is to discuss your case.  Building a brand as an athlete is very important, in the words of sports agent Jerry Maguire to “show me the money.”  Protecting your trademarks just may provide a revenue source you were not aware of, and you might also find yourself able to license your rights to corporate advertisers and video game producers.  Without the rights, you can expect big business to steal what’s hot without compensating you for it, and making you basically engage in a two to three year lawsuit to force them to pay money damages for infringing your trademark and possibly stealing your names, and ideas.  Lawyer up and protect yourself and your brand.

 Federal Trademark Resources

1.  USPTO trademark examining manual

2.  Federal Trademark Search Page

3.  The 100 best nicknames in sports history

4.  ESPN protecting names, slogans and nicknames

5.  Johnny Manziel Trademarks

Sports Nickname Trademark and Right of Publicity Litigation

Our intellectual property law firm can help you register and protect your sports nickname, band nicknames, entertainer nicknames, and other valuable commercial identities.  We help you protect and build your brand.  We offer low flat rate fee legal services for trademarks through our Zip Counsel program.  We can also help you with licensing of your rights, celebrity publicity contracts, right of publicity and federal trademark litigation.  Your commercial identity is valuable, and we help you protect and exploit it.  Call one of our sports and publicity lawyers at (877) 276-5084.

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We are a business and civil litigation firm with a focus on copyright infringement cases involving illegal movie downloads (torrent cases such as London Has Fallen, ME2 Productions and Malibu Media defense), software audits (ex. Microsoft audits, SPLA, Autodesk audit notification letter, Siemens PLM defense, SIIA, Adobe and Business Software Alliance defense) and other software vendors threatening piracy and infringement. We also handle cases involving internet law, anti-SLAPP, media law, right of publicity, trademarks & domain name infringement, and we have a niche practice area handling California BRE licensing disputes, accusations, subpoena response, statement of issues and investigations. We have offices in San Francisco, Beverly Hills, Newport Beach, San Diego & Phoenix, Arizona and accept federal copyright and trademark cases nationwide. All content on our website is general legal information only and not a substitute for legal advice, and should not be relied upon. Decisions to hire counsel should not be based on advertising alone. Blogs, videos and podcasts are authored by Steve Vondran, Esq. unless otherwise noted. We can be reached at (877) 276-5084.

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