By Vinny Badolato and Katherine Dearing, of Brown Rudnick
When you think of the No. 8 on a sports jersey, which professional athlete comes to mind first – Kobe Bryant? Cal Ripken Jr.? Alex Ovechkin? Perhaps even Yogi Berra (for those “seasoned” N.Y. Yankees fans)? Certainly, these are all extraordinary players with a legitimate claim to being the “Greatest 8” of them all, but this is a discussion that is more likely to occur on a bar stool than at the U.S. Trademark Trial and Appeal Board (“TTAB”).
Nevertheless, Lamar Jackson and Troy Aikman, one a current and the other a former quarterbacking great, have chosen the rather unusual form of the TTAB to try to settle that score. Jackson, of the NFL’s Baltimore Ravens, has challenged the trademark application of Aikman, of the NFL’s Dallas Cowboys, for the trademark “EIGHT” on the basis of likelihood of confusion with Jackson’s own trademark registrations for the mark “YOU 8 YET?” and the design mark (and prior pending applications for the marks “ERA 8” and “ERA 8 BY LAMAR JACKSON”).
In the opposition, Jackson also alleges that Aikman’s EIGHT mark creates a false suggestion of a connection with Jackson, who asserts that he is “well-known by this number due to his notoriety and fame, along with his promotion of this number in his trademarks and in media coverage.” Opposition No. 91292541 at 46 ¶ 10. This dispute raises an interesting question for athletes: is a jersey number really a solid basis upon which to build one’s own brand?
As an initial matter, Jackson faces an uphill climb in the opposition proceeding with regard to his “false suggestion of a connection” claim. A successful assertion of a false connection claim requires that a mark would point “uniquely and unmistakably to that person or institution.” TMEP 1203.03(c)(i)(2). Proving a “unique” connection between the No. 8 and Jackson will prove difficult for Jackson when there have been, and currently are, many famous athletes wearing the No. 8, including another Hall of Fame quarterback in Steve Young, not to mention the athletic legends listed above, as well as other former baseball superstars like Joe Morgan and Carl Yastrzemski. More pointedly, the significance of the No. 8 found on a sports jersey to a consumer (i.e., a sports fan in this context) will depend heavily on what sport a fan grew up watching, where they grew up or lived in the U.S., what sports figure they identified with, and any number of other factors that will determine the significance of the No. 8 to a particular sports fan. With so many “the” No. 8s in the sports world and other variables vying for fan identification, Jackson will be hard-pressed to make the claim to a “unique” connection between him and his No. 8 jersey number.
It is important to note, however, that Jackson does not exclusively rely on his jersey number for his personal brand development, but rather uses a successful approach adopted by other famous athletes. Tom Brady, for example, one of the more famous athletes to wear the No. 12, has also incorporated his initials into his registered “TB12” mark, which provide a more unique connection to him and his personal brand. Other professional athletes have taken a similar tack, such as Anthony Edwards of the NBA’s Minnesota Timberwolves, who promotes himself and his projects under the mark “AE5”, and Luka Doncic of the NBA Dallas Mavericks, who has registered his “LUKA 77” mark with the U.S. Patent & Trademark Office (“USPTO”). Similarly, Jackson includes additional design and word elements in his trademark applications and registrations, such as a stylized wild dog, the term “ERA,” and his full name. All of these creative elements, in addition to just a jersey number, add to the ability of these athletes to develop and protect their individual brands, including registering the marks with the USPTO.
An additional consideration for an athlete in building their brand might be the use of an insignia related to the sport they play or the team for which they play. Here, too, however there are challenges. Sports leagues and franchises have carefully and vigilantly protected and invested in their own intellectual property. Aikman could not, for example, add the NFL logo or the ubiquitous Dallas Cowboys star (which is registered on its own for several classes of goods) to his EIGHT trademark in an attempt to distance his brand from other athletes and brand owners. Aikman would be well-served to follow the example of Brady (which might be a hard pill for him to swallow) and other athletes by incorporating other unique words and design elements into his “EIGHT” mark to render it more distinctive so as to merit trademark protection.
This is not to say that a number by itself can never be registered by the U.S. Patent and Trademark Office, even a jersey number. The best example belongs to arguably the greatest basketball player of all time – Michael Jordan – and his business empire, which own multiple trademarks for his famous jersey number, “23.” Given the extraordinary worldwide fame of Jordan, though, his ability to protect his jersey number only is likely the exception rather than the rule. Few athletes will reach that level of fame – Tiger Woods comes to mind, but golfers typically don’t wear jersey numbers – and still fewer will do so as the only famous athlete to use a particular jersey number.
Whether or not the TTAB ultimately determines that there is a likelihood of confusion between Jackson’s No. 8-formative marks and Aikman’s “EIGHT” application – or if, as with most disputes in the U.S., the matter is settled between the two NFL greats before it reaches an ultimate decision – the lesson to be drawn from it is the creativity required in building a personal brand as an athlete and the care with which those applying for trademarks for those brands should approach use of a jersey number.
