Like any celebrity trying to create a brand presence, athletes have to protect their names, nicknames, logos and intellectual property rights. Regardless of whether you want to protect your identity during a playing career or for a post-career business, you must do what any other celebrity, individual, or corporate brand does: attentively monitor how your names, likenesses, logos, and intellectual property are being used and take the necessary steps when your rights are being violated.
Pick Your Marks
Identify what words, phrases or logos you want to – and can – protect under the trademark law. Your marks could include your first name (“LeBron”), your full name (“George Foreman”), a nickname (“Johnny Football”), catchphrases you use (Marshawn Lynch’s “I’m Just Here So I Won’t Get Fined” or “About That Action Boss”), other words that the public associates with you (“Linsanity” or “Tebowing”), or logos (Shaq’s “Dunkman”). You’ll only be able to obtain trademark rights if you’ve used your name or mark in connection with the advertising or sale of specific goods or services – just putting your name or slogan on a T-shirt is not enough. Goods and services could include things related to athletics like a line of footwear (“Chuck Taylor” sneakers), equipment (“Tiger Woods” golf clubs), or training centers (“Michael Johnson Performance”). You might also use your mark for business ventures unrelated to your playing career —think “Michael Jordan’s The Steak House N.Y.C.” or wines produced under the “Greg Norman Estates” label.
Protect Your Rights
Once you’ve decided on your marks, and identified the goods and services you’ll use them with, the next step is to get an application on file with the US Patent and Trademark Office (USPTO). Although you accrue rights in your marks once you start using them in interstate commerce, it’s significantly easier to protect your valuable intellectual property if you have a federal registration. Here are a couple of examples of why it’s important to take action. Before Heisman Trophy-winning quarterback Johnny Manziel filed a trademark application for his nickname “Johnny Football,” someone else – an unrelated person with no rights in the mark – started selling T-shirts with the slogan “Keep Calm and Johnny Football.” Manziel was forced to take legal action to secure the rights in his own nickname. Jeremy Lin faced the same problem during his meteoric rise for the Knicks. Two individuals seeking to parlay Lin’s fame into their own commercial gain filed trademark applications for “Linsanity” with the USPTO before Lin filed his own application. Simple lesson: don’t wait. If you are using – or intend to use – your name, catchphrase or other mark for a commercial purpose, get the registration process started. The USPTO allows “intent to use” applications, so you can file an application even if you haven’t used the mark in commerce yet – you only need a “good faith intent” to do so.
Capitalize On Your Marks
After you’ve secured your trademark rights, consult with your team on creative ways to capitalize on them through promotion and licensing. You want to “Be Like Mike” – that is, basketball icon Michael Jordan, who generates more revenue now than he did while playing, and just made the Forbes’ annual billionaires list for the first time this year. You’ve built a brand; let your legal and management team help you protect it for years to come.
Christopher R. Chase is a partner at Frankfurt Kurnit Klein + Selz, where he practices sports, entertainment and intellectual property law. He can be reached at email@example.com.