What happens when two famous people want to trademark their nickname? TOM TERRIFIC

What happens when two famous people want to trademark their nickname? TOM TERRIFIC

A trademark is a something that a seller of products uses to distinguish its products from the products of competitors.  Traditionally a trademark is thought of as a word, phrase or symbol, but anything that serves the purpose of a source identifier can gain trademark protection.  The key to gaining a claim to a trademark in the United States is using the trademark in commerce.  By branding products sold in commerce the person selling the products gains a claim to the trademark.  A trademark user can register their trademark in the United States with the United States Patent and Trademark Office (USPTO).  Although federal registration of a trademark is not mandatory, it has several advantages, including notice to the public of the registrant’s claim of ownership of the trademark, legal presumption of ownership in the United States, and exclusive right to use the mark on or in connection with the goods/services listed in the registration.

A trademark owner registers their trademark by filing an application with the USPTO.  The USPTO will review the trademark application to ensure that all the requirements for registration are met.   The primary thing the USPTO will look for when reviewing a trademark application is whether the trademark sought to be registered is confusingly similar to a trademark which is already registered.  If a similar trademark, used on similar products, has a live registration with the USPTO then it is likely the trademark application will be denied.  However, there are several other reasons why the USPTO may refuse to register a trademark.

Registering a trademark related to the name of an individual can be tricky.  While every individual likes to think that their name defines them, many people share the same name.  When one famous individual attempts to register a trademark for their professional name or nickname, people who share the same name frequently object.

An example of a famous person being blocked from registering a trademark on their nickname can be found in the file for U.S. Trademark Application Serial No. 88446266.  The applicant is TEB CAPITAL MANAGEMENT, INC., a holding company for the assets of Tom Brady.  Mr. Brady is an National Football League quarterback, he has played in nine Super Bowls, winning six of them, the most of any player in NFL history.  On May 24th 2019 TEB filed an intent-to-use trademark application for the trademark “TOM TERRIFIC” which is apparently one of Mr. Brady’s nicknames.  The USPTO examiner assigned to the application performed a search of the database of registered and pending trademarks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).

Another famous sports player learned of Mr. Brady’s trademark application and filed a letter of protest with the USPTO. The person who filed the protest is George Thomas Seaver, nicknamed Tom Terrific and The Franchise.  Mr. Seaver is a retired American professional baseball pitcher. He pitched in Major League Baseball from 1967 to 1986 for the New York Mets, Cincinnati Reds, Chicago White Sox, and Boston Red Sox. He played a role in the Mets’ victory in the 1969 World Series.  Based on Mr. Seaver’s protest the USPTO issued a nonfinal office action refusing Mr. Brady’s trademark application.

The USPTO refused the registration on two grounds. Trademark Act Section 2(a), 15 U.S.C. §1052(a), False Connection –  Tom Seaver is so well-known that consumers would presume a connection between him and the trademark.  And Trademark Act Section 2(c), 15 U.S.C. §1052(c) – Name of a Living Individual – Because Tom Seaver is so well known by the nickname Tom Terrific, the public would reasonably assume a connection between Mr. Seaver and the applied-for goods.

The USPTO did not completely close the door on TOM TERRIFIC being registered to Mr. Brady as a trademark, the likelihood of that happening is slim.  If Mr. Seaver consented to Mr. Brady’s application that could save the application, but that is unlikely seeing that Mr. Seaver filed a letter of protest.  The alternative is Mr. Brady could introduce evidence that the public does not associate TOM TERRIFIC with Mr. Seaver, which would be a difficult  thing to prove.  Mr. Brady will have 6 months to respond to the office action otherwise the application will be considered abandoned.

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