March 27, 2015

trademarkLast week, mainstream media highlighted the trademark applications of two sports figures in very different stages of their athletic careers.  News sources recently featured the application of Seattle Seahawks running back Marshawn Lynch for the phrase I’M JUST HERE SO I WON’T GET FINED.  In contrast, headlines discussed the trademark application #WRTS, which was filed by the father of Daylon Mack – a five-star defensive tackle and member of Texas A&M University’s 2015 recruiting class.

All this attention begs the questions: (1) How do trademarks work; and (2) why should businesses and individuals with distinctive phrases, slogans and nicknames consider registering their marks?

Trademark Registration Basics

A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods or services of one party from those of others.  Trademarks are meant to protect the goodwill of companies and avoid confusing consumers.

Brand owners can possess certain “common law” rights in and to a mark based solely on use of the mark in commerce.  However, many brand owners have taken the extra step to obtain federal protection for their marks from the U.S. Patent and Trademark Office (“USPTO”).

Why Register a Trademark?

Filing a trademark application initiates a legal proceeding with the USPTO.  Not every mark makes the cut – only 2.5 million or so of the 6.9 million or more applications filed with the USPTO are currently registered.  Despite these odds, those that are registered on the USPTO’s Principal Register receive a number of significant advantages over common law rights, such as:

(1)    Placing the public on notice that the registrant owns the mark;

(2)   Creating legal presumptions of validity, ownership and exclusive rights to use the mark for the goods and/or services listed in the registration;

(3)   Establishing a date of constructive use of the trademark for evidentiary purposes;

(4)   Permitting the registered mark to become incontestable over time; and

(5)   Enabling the owner to stop the importation of counterfeit products.

Trademark Registration – Avoid Costly Mistakes

If successful, Marshawn Lynch and Daylon Mack’s respective trademark applications could join the ranks of BEAST MODE, LINSANITY and many other registered trademarks for sports-related slogans and phrases.  However, as evidenced by the partial rejection of Cleveland Browns quarterback Johnny Manziel’s JOHNNY FOOTBALL trademark application in January of this year, even the most popular phrases and slogans are susceptible to costly setbacks at the USPTO, including likelihood of confusion with a third party’s mark, inappropriately identified International Classes of goods and/or services and a failure to properly demonstrate use of the mark in commerce.

If you need assistance with registering a trademark of your own, or if you have been served with an office action or notice of opposition related to your trademark application, please e-mail us at info@kleinmoynihan.com or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney.  Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

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