Big names in the sports world have recently come under scrutiny for their trademark applications. In all these cases, the applications have been rejected. 

Tom Brady filed a trademark application for a nickname, but fumbled his application at the USPTO (and in the court of public opinion). In another, LeBron James scores as a trademark martyr, submitting an application he knows will be rejected to try to open up a commonly used term for all to use. And lastly, one university (guess which one?) tries to register a common three-letter word and is denied on multiple grounds. 

These applications all bring to light advanced IP laws and issues you might not have considered when protecting your brand or company. 

Related: Did You Get Punk’d By a Trademark Spammer or Patent Troll? 

Tom Brady Fumbles His “Terrific” Trademark Application 

Tom Brady recently filed a trademark application for the term TOM TERRIFIC, which he intended to use for T-shirts and fan collectibles. However, as you may or may not know, “Tom Terrific” is the nickname for Tom Seaver, an MLB Hall of Fame pitcher who played with the New York Mets for over a decade, including the “Miracle Mets” team that won the 1969 World Series Championship. 

Public outrage followed (not just from Patriots haters) and Tom Brady was widely derided for trying to co-opt the “Tom Terrific” nickname. After all, the term is clearly associated with a Hall of Fame athlete who was around before Brady was even born. 

Trademark Tidbit #1: Letter of Protest

Shortly after Brady’s application was filed, a letter of protest was filed with the USPTO. It was accompanied by more than 80 pages of evidence establishing that the term “Tom Terrific” is connected with Tom Seaver. 

After a trademark application has been approved by an examiner, it is published in the Official Gazette, which starts the clock on a 30-day opposition period during which the public has an opportunity to oppose registration of the mark on various grounds. But a letter of protest can be submitted even before the opposition period opens. A letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark, but will only be accepted if it presents an issue that can be dealt with by an examining attorney in the course of examination of an application. 

A letter of protest is not appropriate in contentious situations, such as for claims of prior use or ownership disputes, but may be used to submit factual, objective evidence that a mark is not properly registrable — in this case, because TOM TERRIFIC could falsely suggest a connection with Tom Seaver.

The USPTO accepted the letter of protest and instructed the examiner to consider the evidence submitted.  The examiner then refused Brady’s application on the grounds that the term TOM TERRIFIC “points uniquely and unquestionably to Tom Seaver, and the fame or reputation of Tom Seaver as ‘Tom Terrific’ is such that a connection between Mr. Seaver and the applied-for goods would be presumed.”

When asked about the trademark application, Brady had an interesting response to the refusal. He said that he didn’t actually want to use the mark on any goods, as one might assume from having filed the application. Instead, he said that he wanted to file the trademark because he didn’t like that others had bestowed the “Tom Terrific” nickname upon him. He wanted to prevent anyone else from using it in connection with him. 

Trademark Tidbit #2: “Intent to Use” Application

Brady filed the TOM TERRIFIC application as an “intent to use” application. Trademark applications may be filed as use-based by applicants who are already using a mark in interstate commerce for identified goods or services, or also may be filed as “intent to use” by applicants who submit a declaration stating that they have a bona fide (or real) intent to use the mark in interstate commerce for the identified goods or services and submit a declaration supporting their intent.

So, did Tom Brady really intend to use the mark?  Did he just backtrack when caught in the act? Or was he trying to prevent people from calling him by Tom Seaver’s nickname?  

LeBron Takes the Fall for Taco Tuesday

Everyone knows Taco Tuesday, right?  Next Tuesday, head to any restaurant that serves tacos.  Bonus: Take a picture of your taco and tag it on social media with #tacotuesday. Last count on Instagram: 3.3 million posts with the hashtag.  

Hopefully the restaurant you went to isn’t advertising its “Taco Tuesday” festivities, or it may get a cease and desist letter from Taco John’s. Taco John’s owns a registration for TACO TUESDAY for restaurant services.  The restaurant claims that it has been using the mark since the late 1970s and, as it turns out, actively enforces its rights in the mark. Taco John’s’ registration applies everywhere in the United States except for New Jersey. Another registration exists in New Jersey, owned by a separate restaurant. 

Enter LeBron James. James regularly publicizes his family’s “Taco Tuesdays” on social media. James filed an application for TACO TUESDAY for use in connection with a wide variety of entertainment and advertising and marketing services, including podcasts, websites, and social media. It was refused on the grounds that the term TACO TUESDAY is a “commonplace” and “widely used message used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.”

When asked about the application, LeBron James’ spokesperson said that, by filing the application, he wasn’t trying to obtain exclusive rights in the mark. Instead, James wanted to protect himself and open up the term to anyone who wanted to use it by provoking the USPTO into going on record that TACO TUESDAY is essentially a generic term.  

Related: What to Do When YOU Get a Cease and Desist Letter

Trademark Tidbit #3: Trademark Cancelation Petition

James’ strategy in this case may have been less expensive than filing a formal petition to cancel Taco John’s’ trademark registration for TACO TUESDAY, but may have accomplished a similar end result for him. The USPTO stated that the term is a commonplace message, widely used among restaurants, and not eligible for registration as a trademark. Taco John’s retains its registration (for now), but enforcement may be more difficult than it already was with the USPTO on record stating that the mark is “commonplace.” 

“The” Ohio State University’s Rejection Letter 

If you’re a college football fan, you may have picked up on The Ohio State University’s attempt to register the “The” before “Ohio State University” as a trademark in connection with T-shirts and baseball caps. 

Like Brady’s trademark application, Ohio State’s application for THE stirred up public outcry, particularly from fans of other college teams who find the emphasis to be somewhat pretentious. Attempting to claim exclusive rights in the word THE added insult to injury for those fans (especially fans of the University of Michigan). 

Trademark Tidbit #4: Source-Identifying Significance

As you might expect, the application was refused on a couple of grounds. First, it was refused on ornamental grounds. Ohio State submitted a specimen, or evidence, of its use of the mark on T-shirts and baseball caps.  However, the word was just screen printed on the shirt and stitched on the front of the hat, which the USPTO determined is decorative and has no real source-identifying significance. The purpose of a trademark is to indicate the source of goods to consumers and to distinguish the goods from those offered by others.  Decorative or ornamental use of a mark does not accomplish that purpose. 

The application was also refused because Marc Jacobs, a clothing designer and producer, has a prior-pending application for THE for clothing, apparel, backpacks, and handbags. Marc Jacobs submitted a specimen showing the mark on tags affixed to the items, which have source-identifying significance rather than appearing as decorative or ornamental features. 

Final Notes

Trademark law is tricky and advanced IP laws can sometimes stand in the way of your application. What do these three recent cases tell us?

  • Before you submit your trademark application, make sure that you’re appropriately filing the right type of application to avoid a Brady-esque snafu. 
  • If you want access to a trademarked term, you might just be able to get it if you pull a LeBron-style stunt. 
  • Determine if your desired trademark is ornamental, source identifying, or both before you file to dodge a rejection letter like Ohio State University.