By Paul A. Borovay, Associate
Unless you have turned a blind eye to all sports over the last two years, there is a good chance that you have heard of Johnny Manzeil, the talented (and polarizing) quarterback from Texas A&M. Manzeil was the first freshman football player to win the Heisman trophy, and he won it in style. During his rise to the college football elite, he, like many athletes before him, received a nickname from the media: Johnny Football. While NCAA amateurism rules kept Manzeil from profiting from his name and likeness during his collegiate sports career, those same rules did not keep the media and other private companies from making money on selling merchandise bearing the mark JOHNNY FOOTBALL.
In November 2012, Kenneth R. Reynolds Family Investments (“Reynolds Investments”) filed an intent to use trademark application for JOHNNY FOOTBALL, which covered electronic games, athletic apparel and footballs. Ser. No. 85/769,563. Not surprisingly, Manzeil, submitted a Letter of Protest against Reynolds Investments’ application, claiming that JOHNNY FOOTBALL identifies a particular living individual and Reynolds Investments’ application failed to include Manzeil’s consent.
After receiving the Letter of Protest, the Examiner for this trademark application rescinded his approval of the trademark application and, on August 16, 2013, requested that Reynolds Investments submit a the written consent of Mr. Manzeil to use his “name.” The consent requirement includes any pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a). Reynolds Investments has until February 16, 2014 to respond.
This situation is similar to that of Anthony Davis, the Kentucky basketball star and the NBA’s number one draft pick in 2012. There, BlueZone, LLC, a local clothing store in Lexington, Kentucky, began selling T-Shirts and jerseys with the mark FEAR THE BROW. The “brow” for which people should fear was actually Davis’ unibrow – a distinguishing feature that Davis wholeheartedly embraced. To secure its rights in the mark, BlueZone applied for the trademark FEAR THE BROW. Ser. No. 85/643,417. Similarly, Davis contested the mark and filed his application for FEAR THE BROW. Ser. No. 85/643,417. BlueZone ultimately abandoned its application.
Like Davis’ situation, Manzeil technically remains second in priority for the mark JOHNNY FOOTBALL because he filed his trademark application in February 2013. However, without Manzeil’s consent, Reynolds Investments will likely have no choice but to abandon its application, giving Johnny Football himself the right to finally make money off of JOHNNY FOOTBALL the trademark.
Davis and Manzeil, while stars in their own right, highlight a revenue stream that many athletes have yet to fully exploit. As media licensing agreements and mobile advertising dollars increase exponentially, so to can athletes’ endorsements contracts. If athletes protect their brands and build them properly, these endorsements will continue long after his or her professional career is over. Athletes, now more than ever, need to actively manage their brands, which will ultimately ensure that Johnny Football profits from being “the” JOHNNY FOOTBALL and that Anthony Davis reaps the rewards of keeping the best kempt unibrow in the NBA.
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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.