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Urban Meyer & The Ohio State University: Trademark Trust Falls
by Guest Blogger
I recently read an interesting article in Forbes entitled "Why On Earth Did Ohio State's Urban Meyer Have To Register His Name With The Trademark Office?" The article discusses why there is a trademark registration on his personal name. It's a good article; check it out. The U.S. Trademark Office has particular rules about registering the names of famous people. There are actually lots of famous people who have registered their names as trademarks.
When I finished reading the article, the questions I actually had were "Why on Earth did Ohio State Register His Name? Why didn't he register it himself?"
It is common for famous individuals to register their own names. For example: Taylor Swift, Brad Pitt, Dolly Parton, Madonna, and David Beckham. In other instances, famous people register their names personally and then assign them to holding companies that they control. For example, this appears to be the case for Beyonce (BGK TRADEMARK HOLDINGS, LLC), Michael Jordan (Jump 23, Inc.), and Oprah. Much less common is for a famous person to simply assign his name to a third party.
An assignment is an outright sale while a license is a limited permission to use something. Said another way, the owner of a trademark controls the entire mark by default, unless a contract (license) provides otherwise.
What difference does it all make? Well, other than Prince (are we back to a name now?), most people prefer to keep their names. I suspect that most people like to be able to control how their names are used. That sounds obvious, but it makes trademark sense too because the owner of a trademark must control the goods and services being produced under a trademark. When the actual person differs completely from the owner of the trademark rights for that person, there is potential for conflict. Another reason is that if the relationship ends, it is always harder to get your name back than to terminate someone else's right to continue using it. Consider your leverage if the goods bearing your name start to become chincy or obscene.
Why do some celebrities assign their trademark names to their own companies? One reason is to create an inheritance vehicle that can easily be transferred, and to create perpetual control over the trademark name. Another reason may be for advantageous tax treatment.
I looked at the Urban Meyer Assignment filed in the URBAN MEYER trademark registration. Mr. Meyer indeed assigned his rights in his name (as used in the trademark) to Ohio State. The question is "why?" I remain curious.
The good news is that the assignment requires Ohio State to "promptly upon request" assign the URBAN MEYER trademark back to Mr. Meyer if his contract ends. It also requires Ohio State to get approval from Mr. Meyer of all uses of his name. Perhaps the answer is that when all of your fame is wrapped up in a particular football team, it just doesn't really matter if the team owns your name? The rest of the good news is that Mr. Meyer appears to be all in at Ohio State, so maybe it doesn't matter who owns the trademark. This may all just be a trust fall exercise.
When you become famous, carefully consider how you will control your name. Will you sell it? Will you license it? Will you change it?
Good luck out there.