By Sherrina S. Lofton
Marshawn Lynch, the running back for the Seattle Seahawks, is seeking to trademark, “I’m just here so I won’t get fined,” a phrase he recently popularized during a pregame press conference. During the Super Bowl XLIX media day, Lynch repeatedly responded to questions from reporters with the phrase. The popular Seahawks player has filed a trademark claim for the phrase, which popularized in the national media, with the United States Patent Trademark Office (USPTO). On February 18, 2015, Lynch filed to have the phrase trademarked so that he would have ownership over the use of the phrase on products such as athletic shirts, baseball caps, beanies, pullovers, sweat shirts, short-sleeved or long-sleeved t-shirts, sweat shirts, t-shirts, and track jackets.
This is not Lynch’s first time filing for trademark of a phrase he has uttered during a Super Bowl media day. He has also trademarked the phrase, “About that action boss,” which he said during the only interview he conducted last year with Deion Sanders for the NFL Network Super Bowl XLVIII media day. Lynch filed for trademarking of the phrase on October 20, 2014 under International Classes (IC) 14, 18, & 25, which include use on (1) bracelets, namely, bracelets made of silicone; rubber or silicone wristbands in the nature of bracelets; watches; (2) all-purpose sport bags, all-purpose athletic bags, all-purpose carrying bags, athletic bags, backpacks, book bags and duffel bags; and (3) men’s, women’s and children’s clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps. The phrase “About that action boss”, is due to be published in the “Official Gazette” on March 24, 2015. Though the mark will be published in the Gazette, Lynch will not have ownership of the phrase until he receives the registration certificate. If there are no opposition to the mark Lynch will be granted ownership.
Additionally, he owns four “Beast Mode” trademarks, which is also the name of his clothing line. These four were granted ownership on August 12, 2014; November 04, 2014; December 4, 2012; and July 7, 2009. Lynch is currently in the process of trademarking two additional “Beast Mode” marks, one of which is being opposed by Monster Energy Company and USA Nutraceuticals Group, Inc., as of January 14, 2015. Lynch intends to use the mark on candy and non-alcoholic beverages (i.e. energy drinks, sports drinks, and coconut water); however, both companies produce similar products. Thus, Lynch will have to prove how his products are different than those of the plaintiffs. Lynch’s other three “Beast Mode” trademarks are at varying stages of the trademark process with one being divided for use on different products by Lynch, amended, suspended, or approved for publication. The various “Beast Mode” marks are intended to be used on items such as: headphones and ear buds, football gloves, baseball gloves, running gloves, and for sports and entertainment services in the nature of conducting and participating in football games. Furthermore, Lynch is also in the process of trademarking the phrase “Power Pellets”, which he has filed an extension request to file the statement of use.
A trademark is generally considered any word, slogan, symbol, design, or any combination of the sort used by a person or which a person has a bona fide intention to use in commerce to (a) identify and differentiate his or her goods from those of other suppliers or venders, and (b) indicate the source of said goods (15 U.S.C. § 1127). Regarding the permit and registration of bona fide trademark use, one would need to (1) file an application explaining the mark, (2) specifying the goods intended to be used in connection with the mark, as well as a drawing of said mark, (3) providing a statement verifying no other person has rights to use said mark in commerce, and (4) why the mark warrants protection (15 U.S.C. § 1051). Once the trademark application has been filed an examining attorney reviews it and determines if the application complies with all rules and statues. If there are no objections to the registration of the mark, the attorney approves the mark for publication in the USPTO “Official Gazette”.
The Lanham Act enacted July 5, 1964, is the primary federal statute for trademark law in the United States. It prohibits activities such as trademark infringement, dilution, and false advertising of a trademark. It uses a three-part test to decide whether a trademark has been violated, wherein two of the three components must be met: (1) the conduct of the defendant must have a substantial effect on United States commerce, (2) the defendant must be a citizen of the United States, and (3) there must be no conflict with foreign law. After a trademark is registered with the USPTO and published, any party who believes the mark is damaging to them or their business has 30 days to file a claim in opposition of the registration. If a claim is filed in opposition of the registration, the Trademark Trial Appeal Board (TTAB) will handle the claim. The TTAB hears and decides adversary proceedings between two parties in opposition and a party in cancellation. The TTAB also handles interference and concurrent use proceedings. If there are no claims or oppositions to the mark, the USPTO registers the mark and assigns proprietorship to the applicant. However, in order to maintain proprietorship of the mark, the registrant must regularly use the mark and protect their exclusive rights of use. If a trademark is violated, the proprietor may file a petition against any unauthorized use of the trademarks stipulated by the Lanham Act.
Lynch is not the first National Football League (NFL) affiliate to file for trademark of a phrase used during a press event. In a 2006 after game press conference, former Arizona Cardinals Head Coach Dennis Green furiously yelled, “They are who we thought they were”, and “We let them off the hook” after losing a 20-point lead against the Chicago Bears. Later on November 28, 2007 he filed to trademark the two statements. However, Green was never granted ownership of either phrase because he failed to respond to the office actions for both phrases. Later in January 2010, both phrases were considered abandoned because Green never responded to the office actions. Although both phrases have been abandoned, Green can request reinstatement or revive either mark. Unlike Green, who was not granted ownership of the phrases he echoed, Lynch already has ownership of four and is expecting to add six more under his ownership.
Sherrina S. Lofton is a doctoral student at Florida State University.
