By: Vivek Vaidya
The trend in athletes seeking federal trademark protection is rapidly increasing. One recent example is UFC star Ronda Rousey, who filed for various trademarks having to do with the acronym “FTA” (F@#! Them All). The subject matter is getting increasingly unconventional, ranging from athletes’ nicknames such as former Texas A&M quarterback Johnny Manziel’s “Johnny Football,” acronyms such as Rousey’s “FTA,” and phrases said in interviews like Marshawn Lynch’s infamous statement “I’m just here so I won’t get fined.”
In previous articles, Bend Law Group discussed the “Benefits of Trademark Registration” and “How to Trademark Your Own Name”. While athletes are trademarking their legal names, it is the bizarre nicknames, acronyms, catchphrases for which they are seeking protection that present interesting questions about trademark distinctiveness. This article discusses the spectrum of trademark distinctiveness to shed light on why some of these marks are being granted, regardless of their unconventionality. In fact, these marks may be receiving protection because of their unconventionality.
Generally speaking, there are two types of trademarks: word marks and design marks. Word marks are things like names, phrases, acronyms such as “ESPN,” and tag lines such as “Just Do It.” Design marks are symbols such as the apple for Apple computers, colors, sounds, scent and product packaging (also protected by trade dress). This article discusses word marks. With respect to the distinctiveness requirement in word marks, there are three general categories: inherently distinctive, not inherently distinctive and generic. Below is a summary of each category:
Inherently Distinctive (receive protection immediately upon use)
- Arbitrary Marks: Has meaning but the meaning has no relevance to the product or industry (e.g., “Apple” for computers). Highly protectable.
- Fanciful Marks: A coined word without any meaning (e.g., “Xerox” for copiers). Highly protectable.
- Suggestive Marks: Suggests something about a product, but indirectly or in an unusual fashion. Here, the consumer must engage in a mental process in order to associate the mark with the description of the product or service (e.g., “Greyhound” for bus travel company). Protectable.
Not Inherently Distinctive (only protectable at the point that they acquire “secondary meaning”)
- Descriptive Marks: Describe the product or service they identify (e.g., “chewy” for cookies). Not immediately protectable, but may become protectable via “secondary meaning.”
- Secondary Meaning: arises when the public has been exposed to use of the descriptive mark enough to recognize the mark not just in its descriptive sense, but also as an indication of the source of the product or service.
Generic Marks (not protected; not capable of identifying source)
- Generic Marks: The common descriptive name of the good or service it is used to identify, or is otherwise viewed as synonymous with the product or service (e.g., “peanuts” or unadorned, realistic likeness of a peanut).
The above spectrum helps to explain why athletes’ unusual word marks such as “FTA,” “I’m just here so I won’t get fined,” and “Johnny Football” are registrable. Acronyms such as “FTA” and phrases such as “I’m just here so I won’t get fined” likely fall under the inherently distinctive category. “FTA” and “I’m just here so I won’t get fined” are arguably arbitrary/fanciful and thus highly protectable marks. “FTA” is just a random phrase that has nothing to do with Ronda Rousey as an athlete. The same can be said for “I’m just here so I won’t get fined,” because that phrase has nothing to do with Lynch’s ability to score touchdowns. At the very least, these marks are suggestive and still protected without having to acquire secondary meaning. This might be an indication that the more random and bizarre the word mark is, the more likely the public figure is to receive federal trademark protection without having to prove secondary meaning. A nickname like “Johnny Football,” however, would likely not qualify as inherently distinctive because the mark is descriptive. The player’s name is Johnny Manziel and he plays football. But even if the mark is not inherently distinctive, and as long as the mark is not generic, it may become registrable by achieving secondary meaning.
In sum, specific requirements must be met under federal trademark law for athletes to secure their unique marks, and it takes someone knowledgeable in the field to navigate this process efficiently. If you have questions about registering your mark, please give us a call at (415) 439-0153, or email us at firstname.lastname@example.org.
Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.