June 14, 2019

Terrific Trademarks?

Recently, you may have heard the news about Tom Brady, a somewhat well-known quarterback in the professional sport of American football. His company, TEB Capital Management, Inc., filed two trademark applications seeking registration of the mark TOM TERRIFIC, one for shirts and one for trading cards, posters, and photographs. The applications were filed on an intent-to-use basis.

Apparently people keep track of what this guy does. So the news of these applications broke days after the applications were filed. It is not unusual for athletes and others in the entertainment field to convert a nickname into a brand for use with goods and services and seek to protect it as a registered trademark. But it may be less usual for an athlete to do this when the nickname is one shared with another beloved athlete. In this case, it appears that many sports fans recognize TOM TERRIFIC as the nickname of Tom Seaver, a Major League Baseball Hall of Fame pitcher who played with the New York Mets, including when they won the 1969 world series.1 These fans were less than pleased to see someone else try to register TOM TERRIFIC as a mark.

It seems each of these athletes reached the pinnacle in his field (or gridiron), and have the avid fans to prove it. If only the fans had shown a little more creativity in bestowing nicknames.2

During an interview, perhaps in an effort to defuse the situation or simply to defend himself against the complaints, Mr. Brady assured everyone that he was just registering the mark because he did not like the nickname and wanted “to make sure no one used it.” When asked to confirm he had no plans to use [the mark with] any merchandise, Mr. Brady responded, “I hope not.”

If his trademark lawyers were listening to this interview, their hearts surely deflated at these words. These statements undermine the oath Mr. Brady swore upon filing the applications declaring that his company had a bona fide intent to use the mark in commerce.

There are multiple grounds for filing trademark applications in the U.S. Generally, if the applicant is from the U.S., its U.S. trademark application may be based on either use of the mark in commerce or intent to use the mark in commerce. An applicant who files an intent-to-use application must still prove use of the mark in commerce before a registration may be issued. Congress was clear that the intent to use the mark must be bona fide and the application cannot be used simply to reserve a mark. In fact, if the intent to use the mark in commerce is not bona fide, someone else might be able to successfully oppose and prevent the mark from being registered.

A week after Mr. Brady professed a desire to keep others from using TOM TERRIFIC as a nickname for him, his company’s trademark applications remain pending. Though he professed a desire not to see this nickname used, no express abandonment of the applications has been filed with the PTO. If the applications proceed, will they be challenged on the grounds of false suggestion of connection or lack of bona fide intent to use? While the examining attorney reviewing the applications could raise the former issue, the latter is more typically raised (if at all) in the opposition context by a third party. Even if these trademark applications go nowhere, at least “Psycho Tom” (another one of Mr. Brady’s monikers) has other nicknames he may choose for branding.

1As many of my colleagues were quick to point out, he later played for the Cincinnati Reds.
2While the news is filled with allegations that Mr. Seaver received his nickname “first,” few people speak up to challenge this assertion with a citation to the 1950’s Terrytoon cartoon character Tom Terrific.