Newsflash — professional athletes are their own individual business. Yes, they primarily earn the big bucks for their on-the-field play, but their earning potential may be just as high off the field. All in all, their on-the-field play and off-the-field endorsements ultimately form the athlete’s individual brand. Thus, it is not surprising that they would take the necessary steps to protect their brand or, more specifically, file an application for registering their own trademark(s).
Once the particular athlete receives official registration for his mark(s), the process is far from over. That is, he or his designated attorney must submit proper documentation at certain checkpoints along the way.
First, he must file a Section 8 Declaration of Use of Mark in Commerce (§8) between the fifth and sixth years after the registration date, which is $100 per class of goods and/or services.
To that extent, he also has the option to file a Section 15 Declaration of Incontestability (§15), granted that the mark is used in commerce for five consecutive years, and results in “conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services.”
Simply put, it is the fullest form of protection available but filing it is not required. Additionally, it may be filed in conjunction with §8, which will cost a total of $300 per class of goods and/or services.
Next, between the ninth and tenth years after the registration date, he must file a combined §8 and Section 9 Renewal (§9), which will cost $400 per class of goods and/or services.
Altogether, as you will see below, some NFL athletes are the sole owner of their registered mark(s); on the other hand, sports agency or law firms are the sole owner of the athlete’s registered mark(s).
In terms of the former, Darren Heitner — a former Sports Law Brief guest — wrote that “this is a growing trend among professional athletes.” Regardless of whether the athlete is the sole owner of the mark or not, he must provide written consent in his application.
In any event, if the athlete does not timely file the aforementioned applications nor files within the acceptable six-month grace period available for each renewal ($100 filing fee is required for the grace period), then the athlete will lose his federal registration rights and the USPTO will deem the mark as “dead.”
*This list meant is not intended to be exhaustive.
The Best Football Player Ever Aaron Rodgers (Green Bay Packers)
Calvin “Megatron” Johnson (Detroit Lions; Retired)
Yes, I know that Johnson retired this past offseason and therefore is not currently in the league, but I’m obligated to include his mark because a Wisconsin Bar-certified attorney assisted with (and probably filed) the application.
Colin Kaepernick (San Francisco 49ers)
Confused about the Madison, WI, P.O. Box? It is *probably* the address of Madison-based sports agency, X-A-M Sports, Kaepernick’s representative. Regardless, Kaepernick was actually born in Milwaukee and lived in Wisconsin until age four.
Cam Newton (Carolina Panthers)
Tom Brady (New England
Russell Wilson (Seattle Seahawks)
Jimmy Graham (Seattle Seahawks)
While Graham currently plays for the Seattle Seahawks, he first used this mark in commerce and subsequently filed an application during his time as a member of the New Orleans Saints in 2012. No disrespect to Graham’s trademark attorney(s), but maybe they should not have claimed color as a feature of the mark …
Darrelle Revis (New York Jets)
Ndamukong Suh (Miami Dolphins)
Suh received registration for all of his marks while he was a member of the Detroit Lions (2010-2014). He signed a six-year, $114 million contract (~$60 million guaranteed) with the Dolphins in 2015.
Brandon Marshall (New York Jets)
Marshall received registration for both marks after he joined the Jets via trade, yet he filed both applications when he was a member of the Chicago Bears (2012-2014).
Drew Brees (New Orleans Saints)
Joe Flacco (Baltimore Ravens)
Flacco received registration roughly one month before he and the Ravens won Super Bowl XLVII against the 49ers.
Robert Griffin III (Cleveland Browns)
Griffin received registration for his mark during his time as a member of Washington Redskins (2012-2015). This past offseason, he signed a two-year, $15 million contract (~$7 million guaranteed) with the Browns.
Marshawn Lynch (Seattle Seahawks; Retired)
Again, I know Lynch recently retired. Still, he is simply the best, especially because of the mark listed last, so I had to include him …