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Category: Trademark

Changing the Applicant Name in a Trademark Application

In the past year, I have dealt with one issue more times than I have in the previous ten years of practice: correcting or changing the applicant name in a trademark application.  Apparently trademark applicants are mis-identifying themselves more frequently in trademark applications than they used to.

Changing or correcting a trademark applicant’s name is not always a straightforward or safe thing.  The reason for the correction dictates whether it can be made at all.  Some changes are simple, some are complicated, and some will potentially invalidate the trademark application.

Different Types of Changes

A change of the trademark applicant name may need to be made if any of the following have occurred:

  • Owner changed its name without a transfer of assets
  • Transfer of ownership of the trademark
  • The owner was identified incorrectly in the original trademark application filing

Trademark Filing Basis Can Limit the Change

The law limits the extent to which a trademark applicant can change an owner’s name on an intent-to-use trademark application.  You generally cannot assign an intent-to-use trademark application to a third-party.

Any name changes of intent-to-use applications must reflect only changes of ownership to a business successor for the goods and services connected to the trademark.  Otherwise, you must wait until the trademark application’s filing basis changes to “in-use,” such as after filing an Amendment to Allege Use or a Statement of Use.

Entity Name Change

Sometimes, a company changes its name without merging or selling.  When the company simply undergoes a name change, then updating the applicant name in the trademark application is fairly easy.  Go to the Electronic Trademark Assignment System (ETAS) and then select “Change of Name”:

Change of name form for a trademark application

ETAS Change of Name Form for a Trademark Application

You may also need to change the entity name if the owner was a person and changed his or her last name.  For instance, if the owner got married and adopted a new last name, she could change her name in this way.

Transfer of Ownership

If the trademark has changed hands, then you should record a transfer of ownership or a trademark assignment.  Typically, this will happen when one company buys a product line or another company.

The Trademark Office requires submission of the document effecting the transfer of ownership.  This document will become public record.  For this reason, big agreements sometimes include a separate trademark assignment as an exhibit to the agreement.  This allows the attorneys to file only the exhibit without revealing all the details of the big agreement.

Correcting a Mis-Identified Applicant

When a trademark application initially identifies the wrong applicant, real problems can arise.  Changing the applicant name in a trademark application like this has to be done with extreme caution.  It can result in the invalidation of the application.

First, a trademark application must always identify the owner of the trademark as the applicant.  When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment.  The application is then void and invalid.

If there was a mistake in identifying when the applicant’s name was entered, then this might be correctable.  There are only a few situations in which this correction can be made:

  • If the trademark owner provided its trade name, or its dba, but that name is not actually its legal name, then the Trademark Office does permit a correction. You can fix the application to change the applicant name from the dba to the entity’s actual legal name.
  • If the application identified a division of the company, rather than the company itself, this mistake can be corrected.
  • If you forgot to put something minor like “The” or “Inc.” then in most cases this mistake can be corrected. The Trademark Office will not tolerate any change more significant, however.
  • If there is an internal inconsistency in identifying the owner, then the Office will permit correction of the applicant name. For example, in some places, you may have listed the owner as a company and in other places as an individual; the Office will let you correct this to make all references to the owner consistent.
  • If the owner changed its name before filing the application and used the old name on the application, then the owner may correct the applicant name to the new name. You may be required to explain that the previous name and current name identify the same enterprise.
  • Identifying partners in a partnership, rather than the partnership itself, can be corrected.

Some specific situations that cannot be fixed:

  • Trademark applications that identify an employee of a company as the owner, rather than the company itself, cannot be corrected.
  • If the trademark application identifies a first company as the trademark owner, but prior to the filing date of the trademark application, that first company had actually already transferred the trademark to a second company, then the trademark application is void.
  • If a trademark is owned by a joint venture, but the application only names one of the joint venturers, then the application is void.
  • If the trademark application identifies a related company which is not the owner, then the trademark application is void. For instance, if a sister company owns the trademark application, or if a subsidiary company owns the application.


Office Action Response Deadline Change

Trademark owners will soon have a shorter office action response deadline.

SpaceX flies over Phoenix after launching from Vandenberg

SpaceX flies over Phoenix after launching from Vandenberg

Beginning December 3, 2022, the Trademark Office will cut the normal six-month response period to just three months.

When a trademark application undergoes examination, the Trademark Office sends an office action to raise and address issues with the application.  Until now, applicants have had 6 months to respond to the action.  This was codified in Trademark Office regulations.

Now, applicants have less time.  As part of the implementation of the Trademark Modernization Act, applicants will now have to respond within 3 months of the issue date of the office action.  However, applicants can “buy back” the full months by paying a $125 extension fee.  This will let them have the full 6 months for a response, but applicant have to file the request before the 3-month office action response deadline ends.

This system is similar to the one that the Patent Office uses.  In the Patent Office, the 6-month office action response deadline is shortened to 3 months, and applicants must pay extension fees for individual months.  The extensions are purchased in single-month increments, so applicants can buy an extension for the fourth month, or for five months, or for six months.  The extensions under the patent system are not due preemptively; applicants request them when filing the response in the fourth, fifth, or sixth months.

Not all trademark applications will actually have the abbreviated office action response deadline.  Applications filed into the US through the Madrid Protocol will continue to retain the 6-month response period.  More information is available from the USPTO here.



Trademark Coexistence Agreement

National Mall in August

National Mall in August

A trademark coexistence agreement is an agreement between two parties about their respective use of the same or similar trademarks.  They generally allow two trademark owners to use identical or similar marks, usually in a manner designed to avoid consumer confusion.  They are helpful in several situations.  A trademark coexistence agreement can be used to resolve disputes between two parties, or to prevent potential disputes, or to overcome rejections by the Trademark Office.

 

Trademark Coexistence Agreement to Resolve Disputes

Trademarks are fundamentally intended to prevent consumer confusion.  When two marks are the same or similar, the public can be confused about who the source of the product or service is.  This can flare as a trademark infringement dispute, where one party sues – or threatens to sue – the other party for having a trademark which is too similar to its own.

 

If the parties can resolve this dispute, they will usually execute an agreement.  The agreement might require one party to change its name, or it might allow that party to continue using its name, perhaps for a short period of time or maybe even permanently.  For those latter two options, a trademark coexistence agreement – or at least a coexistence provision – will be used.

 

To Prevent Disputes

Sometimes, before a client files its trademark application, it will conduct a pre-filing clearance search to see if there are other similar or identical marks already registered or used.  This allows the client to evaluate the risk of proceeding forward.  Occasionally, a trademark applicant will proceed forward even though there is a similar trademark already registered, because the applicant feels the mark is different.  In that event, the applicant will sometimes proactively reach out to the prior trademark registrant and request a trademark coexistence agreement to potentially head off even the unlikely risk that consumers will be confused.

 

To Overcome Rejections

When a trademark application is filed, the Trademark Office examines it before it will register the trademark.  During examination, the Office will reject the trademark application if it finds any registered marks which pose a likelihood of confusion.

 

The rejection will stand, and the application will become abandoned, unless the applicant responds and overcomes the rejection.  Often times, the applicant can present arguments based on case law or evidence.  Sometimes, however, there may be reasons to present other arguments.

 

A trademark coexistence agreement is persuasive evidence in response to a rejection.  While not completely binding, the law gives significant weight to a trademark coexistence agreement.  Examiners will generally, but not always, withdraw a rejection the applicant has a trademark coexistence agreement.  However, Examiners will refuse to accept those agreements when they fail to address real conditions and concerns.

Trademark Coexistence Agreement Elements

The Trademark Office’s desire to see “real” agreements reflects the need for a trademark coexistence agreement to be more than just an agreement to use two similar marks.  It must actually address the likely concerns of not just the trademark owners but the consumers as well.  For instance, it could discuss concerns such as:

  • The level of experience and familiarity the two parties have with the respective industry and their customers
  • The similarities and differences in the marks’ sight, sound, and appearance
  • The similarities and differences in the goods and/or services
  • The similarities and differences in the customers and channels of trade
  • Restrictions on any future trademark filings of the parties
  • Amendments to the trademark application or registration details
  • Geographic restrictions on the parties’ respective uses
  • Goods and/or services restrictions on the parties’ respective uses
  • Industry restrictions on the parties’ respective uses
  • Any limitations to how the parties’ trademarks will be displayed or styled
  • Any disclaimers that either of the parties should use
  • Any restrictions on how the parties’ goods and/or services may be advertised
  • Any restrictions on the channels of trade for the parties’ goods and/or services
  • What the parties will do in the event of actual confusion

 

Trademark coexistence agreements are not the right solution in all situations.  In some cases, a trademark coexistence agreement can weaken a trademark owner’s rights and should be avoided.  Speak with a local trademark attorney if you think you need a trademark coexistence agreement or have been approached by someone requesting you to sign one.

 



Crumbl Cookies Trademarks

Riding up to Big Mountain, UT

Riding up to Big Mountain, UT

Earlier this year, Crumbl Cookies sued two competitors.  Crumbl started in Logan, Utah, not far from where I happen to be writing this today in Bountiful, Utah.  Crumbl sells large ornate cookies in pink boxes and has a menu that rotates periodically.  Crumbl feels that other companies have tried to jump into the same space, trade off their goodwill and reputation, and compete unlawfully.

Crumbl sued Crave Cookies and Dirty Dough for trademark infringement, trade dress infringement, and unlawful competition.  The CEO of Dirty Dough published the trademark complaint on his LinkedIn and Facebook pages, so this post addresses that action only.

Essentially, the complaint boils down to Crumbl’s claim that “Dirty Dough … sells and promotes cookies using packaging, decor, and presentation that is
confusingly similar to Crumbl’s established and successful trade dress and brand identity.”

Crumbl claims it has certain intellectual property rights in its business, including:

  • Delivery services for its scratch-made gourmet cookies
  • Packaging in oblong pink boxes that have “no extra space”
  • The color pink
  • The CRUMBL COOKIES logo, featuring a “whimsical, outlined-shaped drawings, including a cookie with a bite taken out of it”
  • Seamless ordering expiring on the Crumbl app
  • Weekly rotating menus

Crumbl will have to establish that it actually has these rights, which will involve arguing that others don’t.  One challenge for Crumbl will be differentiating and delineating its packaging, cookie styles, menus, etc. from those of other cookie companies.  This could be quite difficult.  It will involve defining the market, defining the products, defining the customers, identifying the features or characteristics that make its product unique among its competitors, and other things that are highly fact dependent and may require a great deal of expert work.

Crumbl will then need to argue that Dirty Dough is infringing its rights.  The complaint makes a first pleading on this, for example, by suggesting that the two companies use the same channels of trade including storefronts, websites, and social media accounts.  Of course, for that example, what company doesn’t sell through those channels?  Crumbl attempts to paint the companies as similar because they both use pictures on their respective Facebook pages showing cookies laid flat, shot from above.  Crumbl argues that the two companies both use a cookie image with a bite taken out.  Crumbl even presents in its complaint side-by-side photos of cookies decorated in a similar fashion, such as with a white swirl pattern, chocolate candy bar, or sprinklers:

Crumbl Cookies compared to Dirty Dough cookies

Crumbl on the left, Dirty Dough on the right

These are all going to be difficult arguments.  Certainly, Crumbl has grown quickly and become well-known in Utah.  However, whether it has the sort of fame and exclusivity necessary to exercise the rights it claims it has is an entirely other story.  The case will take a great deal of time to develop, and will probably twist and turn as evidence is exchanged, experts testify about cookie marketplaces and packaging practices, and the parties focus on some arguments more than others.  At this stage, it is far too early to tell what will happen, but this case and the Crave case do establish one thing: they show would-be competitors that Crumbl is not afraid to go to the mat.



Trademark Assignment

Boston Public Library

Boston Public Library

Trademarks are assets of a company. Just like any other asset, they can be bought and sold. However, unlike other assets, trademarks cannot generally be sold by themselves. In other words, a trademark must be sold with something else, something which is related to the trademark. A trademark assignment is the typical mechanism by which a trademark is transferred.

Proper Trademark Assignment

A trademark assignment is either or both of the act of transferring a trademark and the document by which the trademark is actually transferred. Companies will transfer a trademark when they are bought or acquired, or when a specific service or product line is sold or spun off. A trademark assignment actually changes the ownership of the trademark from the first party to the second.

A trademark assignment, if done properly, will usually identify and state a few things. First, the document will identify the trademark itself, usually with a serial or registration number (if a trademark application has been filed or granted), the mark itself, and often with the list of goods and/or services with which the mark is used. This information is often sufficient to clearly identify a trademark. For common-law trademarks – trademarks which are merely used but not filed at the USPTO – the trademark assignment may only be able to identify the mark and its corresponding goods/services. If possible, additional information can be included describing the first use of the mark or geographic areas of use, but one must be careful not to identify that information in a way that unintentionally limits the scope of the trademark’s rights.

The trademark assignment should also identify whether or what other assets, or products, or goodwill is being conveyed with the trademark. The transfer cannot occur in isolation. For example, if Nike were to sell its Air Jordan trademark to Adidas, it could not just give the trademark to Adidas in exchange for a boatload of cash; it would have to also move its inventory of shoes, or plans for designing the shoes, or the Nike division and all the workers responsible for designing Air Jordan shoes.

Improper Trademark Assignment

A trademark assignment can be improper for a number of reasons.  For example, someone may attempt to improperly assign an intent-to-use application, may assign the trademark without a written document, or may not actually have the rights to assign it.  One problem that can arise is a naked assignment. A naked assignment is a transfer of a trademark without any accompanying goodwill. In the above example, if Adidas just sent money to Nike for the ability to use AIR JORDAN and for nothing else, that would be a naked assignment and presumed invalid.

If a trademark assignment transfers a trademark from a company that no longer exists, that assignment can be invalid. Depending on the state law, some companies have the ability to transfer assets during a limited wind-down period after dissolution of the company, but those laws vary from state to state or may not allow it all. Even the local law forbids a non-existent company from transferring a trademark, the conveyance may be invalid. In some cases, clawback, retroactive, or nunc pro tunc agreements might be a possibility, but those should be carefully researched and approached with great skepticism.

Separate Trademark Assignment Documents

When conveying a pending or registered trademark, it is best to record the trademark assignment with the USPTO. Recording at the USPTO makes the assignment public record. As such, sometimes parties may want to draft a trademark assignment as a stand-alone document. This allows those parties to record the trademark assignment by itself without making all the details of a much larger deal public.

For example, if Nike were acquiring Under Armor, there would be hundreds of pages of agreement details covering purchase price, debt obligations, transition periods, stock purchases, employee handling, etc. The vast majority of these details would be irrelevant to the transfer of the trademark, and neither company would probably want to make those details public (and likely, the agreement would have a confidentiality clause preventing those details from being made public). To still be able to record the trademark assignment, the lawyers would put the assignment in an exhibit. The exhibit would probably be only one or two pages and would not contain any details regarding the bigger detail. The lawyers could then file only that particular exhibit with the USPTO while maintaining the rest of the agreement in confidence.



Receiving a Trademark Final Office Action

Arizona Snowbowl Ski Resort above Flagstaff

Arizona Snowbowl Ski Resort above Flagstaff

Trademark applications are examined after they are filed.  This is part of the trademark prosecution process, and it sometimes results in an initial refusal, or “office action.”  Office actions are simply official letters from the Trademark Office.  The Trademark Office uses them to communicate about issues that have to be resolved in an application. If you receive multiple office actions, one will be considered a final office action.

When any office action issues, you have an opportunity to respond.  Under current law, you have six months to file a response.  Fail to file in that time, and your application will abandon.  Often the issues in an office action can be resolved fairly straightforwardly.  Sometimes, a quick phone call to the Examiner is enough.

Occasionally, though, the issues raised are more serious obstacles, and in some cases, one response may not be sufficient.  If your initial response does not resolve the issues in the office action, the Trademark Office will typically send a second office action.  A second office action usually is a “final office action.”

The Trademark Office sends a trademark final office action when the issues are ones that were presented at least once before and when you at least had a chance to resolve them.  There are a limited number of options for responding to a final office action:

Request for Reconsideration

One option for responding to a trademark final office action is submitting a request for reconsideration.  This is essentially a second bite at the apple.  When you file a request for reconsideration, you can present new arguments and evidence to try to convince the Examiner that you are right.  If you file a request for reconsideration and the Examiner does not side with you, the application will become abandoned unless you take further action.

If you file the request early in the response period, then the Examiner might return the denial before the six months is up.  If so, then you can potentially file a notice of appeal to prevent your application from abandoning. The Trademark Trial and Appeal Board (“TTAB“) hears and decides appeals.

However, if you file the request late in the response period, the Examiner may very well return a denial after your six months has expired.  You will not have to file anything else in the application at this point, and it will abandon.

Because of these timing concerns, some applicants file a notice of appeal when they file a request for reconsideration.  This assures them an escape route: if the Examiner denies the second argument, then they will at least have one last shot with an appeal.  And, typically, when a notice of appeal is filed together with the request for reconsideration, the TTAB will actually suspend the appeal to give the Examiner a chance to review first.  After all, if the Examiner reviews it and agrees with you, then it saves the TTAB considerable time.

Appeal

An appeal takes the case off the Examiner’s desk and asks that a panel of administrative judges at the TTAB review it.  To file an appeal, you must first file a notice of appeal and then follow-up with an appeal brief.  The Examiner gets a chance to file a brief in response to yours.  You then have the option to file a reply brief – a final brief that address the Examiner’s brief.  Once the case is fully briefed, the TTAB then considers all of the briefs and the evidence of record.  It renders a decision.  The TTAB frequently affirms the Examiner, so you must pursue an appeal with caution and care.  If the TTAB disagrees, your only option to save the application is to further appeal the decision into the federal court system.  If the TTAB agrees with you, however, the case will be returned to the Examiner with instructions to allow the application to continue through prosecution.



Identity Verification at Trademark Office

On January 8, 2022, the United States Patent and Trademark Office will introduce “identity verification” for registered USPTO.gov users.

Thanksgiving in Phoenix

Thanksgiving in Phoenix – we eat outside!

Before 2019, “anyone” could file a trademark application, so long as they knew how to submit trademark correspondence through mail, fax, or the Trademark Office’s online TEAS filing system. In 2019, the Trademark Office began requiring that users log in to a USPTO.gov account. Now, those users must complete a one-time identity verification step to ensure that their USPTO.gov accounts correspond to biographical information for the actual user.

The intent is to deter so-called “bad actors” who make fraudulent filings at the Trademark Office. This is part of the USPTO’s ongoing process of protecting the validity and integrity of the Trademark Office’s records. The Trademark Office has fallen victim to fraudulent filings in a few ways. For example, some legitimate trademark applications have been co-opted or stolen by people filing without the applicant’s authorization. As another example, in the summer of 2021, the Trademark Office issued an order force-abandoning perhaps 10,000 trademark applications because the filing attorney’s office had fraudulently signed applications in rapid succession, at odd hours, in the names of different applicants spread across the globe, sometime filing hundreds of applications within minutes of each other.

The identity verification tool is provided by ID.me. However, the Trademark Office website does not yet detail how the verification process works other than to say it will take less than 15 minutes. Some things that will be needed:

  • Smartphone or computer
  • Government-issued ID
  • Social security number
  • “Selfie” – yes the Trademark Office actually says it wants a “selfie.”
  • Soft credit check permission – unclear if your credit will need be thawed or unlocked if frozen.

Only trademark applicants, US attorneys, and Canadian attorneys will be able to complete the verification process. Support staff, such as paralegals and secretaries, will be sponsored by verified attorneys. Attorneys outside the US and Canada will not be able to complete the identity verification, because they are not allowed to file US trademark applications at all. The Trademark Office a few years ago changed the rules to prohibit foreign attorneys from acting is US trademark applications.

For more information about identity verification, the USPTO is hosting a webinar on December 14, 2021.



Trademarks and Secondary Source

Shearer Creek Trail, Durango, Colorado

Shearer Creek Trail, Durango, Colorado

A trademark can sometimes be rejected if it is ornamental. This most frequently occurs when the goods are clothing, as I have written before. If your mark is rejected on this basis, there are few escape paths. Secondary source may be one, though.

“Secondary source” is the idea that some trademarks are used to indicate not the source of the goods themselves, but the source of another product or service that has licensed, permitted, or authorized the ornamental use on other goods. In other words, while most trademarks indicate that the goods to which the marks are affixed can be sourced directly to the trademark owner, secondary source indicates that the goods to which the mark is affixed may not come from the trademark owner, but may instead be licensed or affixed with permission. Thus, the trademark owner is not the primary source of the goods but a secondary one.

As an example, a university may authorize its name to be emblazoned across the front of a sweatshirt. If large enough, the name on the sweatshirt is not actually a trademark, because it is merely ornamental. Ornamental “marks” cannot function primarily as trademarks; they are just decoration. However, in this case, the mark is still a secondary source indicator of the university’s educational services. The school would have the opportunity to submit evidence that it provides those educational services under the same mark (the school name) and that evidence would overcome the ornamental refusal.

Frequently, evidence of secondary source is simply a prior registration of the same name for other goods or services. The trademark rules break down a few situations:

  1. ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on actual use in commerce; or
  2. ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on a foreign registration;
  3. non-ornamental use of the mark in commerce on other goods or services; or
  4. ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods or services

Notably, intent-to-use applications will not support secondary source arguments. For example, in In re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982), the Trademark Trial and Appeal Board held that MORK & MINDY was registrable for stickers because the applicant had a television series with the same name and had previously registered the name for various goods and services. The Board found that the primary significance of MORK & MINDY to a sticker consumer was to indicate the television series and the principal characters of the television series. The Board followed the rule from in In re Olin Corp., 181 USPQ 182 (TTAB 1973) (stylized “O” design registrable for T-shirts, where applicant had previously registered the “O” design for skis), where the Board stated:

It is a matter of common knowledge that T-shirts are “ornamented” with various insignia . . . or … various sayings such as “Swallow Your Leader.” In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, “Swallow Your Leader” probably would not be considered as an indication of source.

Lastly, if ornamental use is the only kind of trademark use, then even widespread ornamental use will not establish that a mark functions as a secondary source indicator. Rather, there must be at least some underlying use of the trademark on other goods or services.

Secondary source is an easily confused topic and is only appropriate in some situations. Contact a local trademark attorney to discuss whether a secondary source argument may help your particular case.



Student Athlete Trademarks, Names, Images, and Likeness

Mountain Biking in Bountiful, Utah

Mountain Biking in Bountiful, Utah

Student athletes will now be allowed to profit from their performance and influence.

Until this year, the NCAA prohibited college students from making money for playing sports. However, this month, Florida began allowing students to benefit financially from their performance and the money and attention that brings. California signed the Fair Pay to Play Act (“FPPA”), going into effect in 2023 and affecting schools that make $10 million or more in media rights each yeah. Colorado will allow students to profit from their name, image, and likeness in 2023 as well. Discussion and legislation are working through most of the other states and Congress as well. Rather than being directly paid to play, most rules allow student athletes to accept brand relationships, sponsorships, and other promotional arrangements.

Social Media Influence

Companies seeking sponsorships opportunities are looking for not just outstanding athletes but also influencers who reach a large audience.

A large audience means widespread brand promotion. It also means targeted promotion; the right sponsors may be able access specific demographics through the student’s socials. Those demos may be ones that they cannot otherwise target. This represents a tremendous opportunity for the sponsor and thus can create great value for the student. Knowing this positioning will be incredibly important for any student athlete negotiating a deal.

The Student’s Opportunity

Most athletes become famous long before they turn professional. While professional athletes have an insanely high level of fame, many of them were famous or at least well-known in college, and some in high school. A student who captures the value of their athletic performance while they are still in college builds their brand early and realizes a longer income life.

Some student athletes don’t turn professional, either because they aren’t quite good enough or because there is no professional league for their sport. For them, college may be the only time that they would be able to profit from their performance. Doing so may be an opportunity to make money from their sport before graduating and entering the more normal workforce.

Potential Challenges

Student athletes and the colleges they attend may become competitors. For example, a school that has a contract with Nike to outfit its players in Nike gear only will not be too happy with a student who individually takes a deal to rep Adidas. How does this conflict resolve? In California, the FPPA prohibits the student from closing a deal with a competing sponsor. The NCAA may adopt a similar policy. This potential conflict could be in any number of fields: nutrition, beverages, shoes, athletic and protective equipment, mobile services, etc. This will restrict the student’s opportunities and will require competent representation to negotiate those limitations.

Protecting Name, Image, and Likeness

Being popular on social media is just one aspect of building value. Look at any highly successful professional athlete and you will find a portfolio of trademarks protecting them.

It may seem strange, but a person doesn’t necessarily own their name. Simply having a name does not alone give someone the right to prevent other people from using it. If a student athlete doesn’t actively pursue protection, then there are only a few ways in which they can prevent others from using their name, image, and likeness (“NIL”).

Filing a trademark application is perhaps the easiest, most straightforward, and most definite way to protect a student athlete’s brand. Trademarks can cover the student’s name, nickname, any logo they adopt, or a catchphrase or slogan used on or off the field. Some marks that come easily to mind:

Johnny Manziel’s Trademark

Lance Armstrong’s Former Foundation’s Trademark

Tim Tebow’s Logo

Michael Phelp’s Logo

Jeremy Lin’s Trademark

Serena Williams’ Logo

While filing a trademark application is an easy step, it is one that still requires careful planning. The student and their attorney must consider how the student’s fame is likely to be used, how it will leverage the most value, and consequently how a trademark application should be filed to capture that. Further, once filed, the application needs to be properly processed through the Trademark Office. Once the mark is registered, the student will want to monitor for unauthorized use of their properties.

Some athletes will also want to consider seeking international protection, either because they will play internationally or because they expect their fame to extend beyond the boundaries of the US.

Lastly, owning trademarks protecting one’s name, image, or likeness is just the start – the student athlete will likely want and need guidance in negotiating deals with companies. Representation – either with a registered agent or attorney – will serve the athlete well in ensuring that they take the fullest advantage of their performance.

If you are a college student with questions about how to protect your influence, please feel free to contact trademark attorney Tom Galvani.



Common Ownership of Trademarks

Purgatory Ski Resort

Purgatory Ski Resort

Trademarks are fundamentally about preventing confusion regarding the source of a product or service.  Consumers who encounter two similar trademarks in the marketplace might mistakenly believe that the products come from the same source.  This can allow one company to unfairly ride off a competitor’s goodwill.

Trademark law prevents a company from improperly using a mark too similar to another’s.  This occurs through two mechanisms: first, trademark infringement, and second, trademark registration.  Infringement is an adversarial sorting-out between two parties in which one party’s use of a mark is challenged.  The law prohibits ownership of two similar marks, and infringement proceedings determine who has senior rights.

Trademark registration is an application process with the federal government, where a single party requests that it be granted broad, national, recognized rights in a trademark.  When an applicant files for registration, the application is assigned to a federal Trademark Examiner, who reviews the application on formal and substantive grounds.  A major part of this review process is conducting a trademark search.  The Trademark Examiner runs the search on the Trademark Office’s records only.  If he or she finds a mark which is similar, the possibility for a refusal arises.

A similar underlying mark will not always trigger a refusal, however.  The Examiner must determine the ownership of the underlying mark first.  If the owner of the underlying mark is the same as the applicant, the Trademark Examiner will usually not issue a refusal.  But they may request more information about whether there is common ownership between the underlying and applied-for marks.

Common ownership may exist where the applicant and the owner of the underlying mark are related.  Some relationship between the two companies does not automatically establish common ownership, however.  Rather, there must be a sufficient relationship such that the products or services essentially emanate from a single source, and “source” encompasses more than just “legal entity.”

In addition to the existence of a legal relationship, there must also be a unity of control over the use of the trademarks.  “Control” and “source” are inextricably linked.  If two companies, related in some way, nonetheless are able to exercise their own separate, independent control of the nature and quality of their goods and services, then they exist as separate sources, and a refusal will be issued.  If, however, control of the two companies’ offerings is coordinated, controlled centrally, or otherwise consistent with each other, it is likely that common ownership exists, and a likelihood of confusion refusal would not be issued.

As an example, imagine tow trademark applications filed for two different companies, but based on similar marks and similar services.  The Examiner issues a warning of a potential rejection based on similarity of the marks.  The names of the companies are completely different, but the Examiner notices that the addresses were the same.  The Examiner may be perceptive enough to ask whether common ownership existed.  Indeed, in this case, that is true: although the companies are separate, they are owned by a single person (running an office from a single address).  He makes all sales decisions, all marketing decisions, etc.  In short, a single person controls all decisions about both companies.  The Examiner would accept such an argument and abstain from issuing a refusal.

Sometimes, an applicant may wish to submit a claim of common ownership initially with the filing of the trademark application.  In other cases, the applicant may not wish to make this statement up front.  For more information about common ownership of trademarks, please contact a trademark local or Arizona trademark attorney Tom Galvani directly.