Jared P. Vasiliauskas or Michael V. Viverito, of Power & Cronin, Ltd.
Disclaimer: This Article is intended to provide an overview of Trademark considerations within NIL Agreements and is not intended to be legal advice or to create an attorney-client relationship between the reader and the author.
Almost one year after the introduction of the NCAA’s Interim Name, Image and Likeness (“NIL”) Policy on June 30, 2021, college athletes across the country continue to derive financial benefit from use of their name, image or likeness. As of July 6, 2022, it was estimated that a total of $917 million had been spent in NIL deals.[1] While the upside of the NIL Policy has been felt almost immediately after its passing by college athletes, so too has the downside for those representing them. The current NIL regulatory landscape is a patchwork of state laws, offering little-to-no uniformity across the country. While the hope is that there will be uniform legislation from state-to-state, it is extremely important that individuals representing college athletes research and understand the rules and regulations for the state in which they are operating.
Popular among both professional athletes and collegiate athletes navigating the NIL landscape is filing to obtain trademark protection over a specific phrase or mark. This is done through the United States Patent and Trademark Office. While it is strongly recommended you consult an experienced trademark attorney to assist in the application process, the system currently in place allows virtually anybody to follow the steps and file a trademark application. Due to the fees for filing for and obtaining a trademark, as well as the considerable period of time it takes to receive approval, the utmost caution should be taken by novice users to ensure compliance with federal law. When done correctly, filing for and maintaining a trademark for your client is just one of the ways collegiate athletes can benefit from the use of their name, image or likeness.
The United States differs from many foreign countries in that trademark rights generally belong to the first user of the mark, rather than the first to file. However, the Lanham Act provides that filing an application to register a mark constitutes “constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against.”[2] It should be noted that these trademark priority rights afforded to the first application are subject to certain limitations and cannot be asserted against another person “whose mark has not been abandoned and who, prior to filing –
- has used the mark;
- has filed an application to register the mark which is pending or has resulted in registration of the mark; or
- Has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) of this title to register the mark which is pending or has resulted in registration of the mark.”[3]
Trademark applications filed in the United States can be filed on the basis of actual use in commerce under Section 1(a) of the Lanham Act, or on bona fide intention to use the mark in commerce under Section 1(b). [4] For those applying on the “intent to use” basis, trademark registration will not occur unless the mark is actually used in commerce within a specified period of time: (i) before the application is approved for publication, (ii) within six months of the Notice of Allowance issue date, or (iii) within the extension of time obtained after the Notice of Allowance issue date.[5]
Prior to applying for a trademark, it is imperative that you first search the United States Patent and Trademark Office website Trademark Electronic Search System to see if any phrase or mark has previously been registered or applied for that would create a likelihood of confusion. Likelihood of confusion creates grounds on which a trademark attorney can refuse to register the mark indicated in your application due to conflict with a similar trademark that’s registered for goods or services related to yours.[6] This is because if both trademarks were used in commerce at the same time, it would likely confuse consumers, who may not be able to determine the source of the goods or services.[7] This is in place to protect consumers. For there to be a conflict, it is not required that the marks and the goods/services be exactly the same. The marks only need be similar and the goods and/or services related such that average consumers would mistakenly believe they come from the same source.[8]
Likelihood of confusion is not the only grounds on which a trademark examining attorney can refuse to register your mark. A mark that merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services will be refused registration.[9] If the primary significance of the mark is a generally known geographic location, if purchasers would be likely to think that the goods or service originate in the geographic place identified in the mark, and if the mark identifies the geographic origin of the goods or services, then the examining attorney will refuse your mark based on the mark being primarily geographically descriptive.[10] Generally speaking, the examining attorney will refuse registration of a mark if it is merely a decorative feature, or part of the “dress” of the goods.[11] Such use is merely ornamental and does not serve the trademark function of identifying or distinguishing the mark from others. While there are certainly other grounds on which an examining attorney may refuse to register your mark, these are the most prominent.
Having your trademark approved brings with it the responsibility to maintain your approval status and keep the mark “live”. There are specific maintenance documents that must be produced when required. Failure to file the required documents at the specified time will result in cancellation and/or expiration or your mark, and require a new application to be filed. Please note that the United States Patent and Trademark Office does not police the use of registered marks. That responsibility remains with the owner of the mark. If you believe there is an unauthorized use of your mark, or if there is another mark infringing on yours, it is up to you to proceed with legal action to stop a party from violating your ownership rights. Please consult with an experienced trademark litigation attorney to discuss the full spectrum of protection afforded to your mark prior to engaging in litigation with an infringer. This is especially important for licensable assets, such as trademarks. College athletes have the opportunity to own their own marks and license them out as they see fit. While the ability to license a trademark presents many opportunities for a college athlete to grow their portfolio, there is also the increased chance for unauthorized use. Therefore, carefully monitor your licensing agreements to ensure that your client’s marks are being used as agreed.
The Power & Cronin, Ltd., Sports Law team is experienced in counseling athletes and their representatives on the complexities of the name, image and likeness landscape, particularly with trademark application and enforcement. If you have any questions about the trademark application process, or about name, image and likeness in general, please contact attorneys Jared P. Vasiliauskas or Michael V. Viverito.
[1] Associated Press, NIL Spending estimates surpass $900 million; deals in 2022-2023 could easily top a billion (Jul. 6, 2022), https://www.courant.com/sports/college/hc-sp-college-sports-nil-20220706-20220706-jfaolzlahvg4fkluh5eyqqsbau-story.html.
[2] 15 U.S.C. § 1057(c) (2022).
[3] Id.
[4] See generally, 5 U.S.C. § 1051 (2022).
[5] https://www.uspto.gov/trademarks/apply/intent-use-itu-applications (Jul. 13, 2022).
[6] https://www.uspto.gov/trademarks/basics/why-search-similar-trademarks (Jul. 13, 2022).
[7] Id.
[8] https://www.uspto.gov/trademarks/additional-guidance-and-resources/possible-grounds-refusal-mark (Jul. 13, 2022).
[9] Id.
[10] Id.
[11] Id.
