Texas A&M’s red-hot freshman quarterback, Johnny Manziel, has lit up college football this year. He just took home the Heisman Trophy, which recognizes the nation’s most outstanding college football player – the first freshman ever to receive the honor. During this past season, his running and passing ability helped him shatter all sorts of offensive records on the field. Now off the field, he’s looking to play a little defense by registering a trademark.
With the help of a trademark lawyer, Manziel has filed a trademark application for “Johnny Football”, the nickname that he earned with his stellar play. (For more details, click here to see Yahoo! Sports news article.) story here: http://sports.yahoo.com/news/manziel-trademark-johnny-football-184004715–ncaaf.html). NCAA rules prevent a college player from cashing in on merchandise or other forms of commercial appeal, so Manziel will not be able to actively promote or commercialize the Johnny Football trademark. But that does not mean he cannot prepare a defense to stop others from doing so by having a trademark lawyer file a trademark application.
One tends to think of a trademark as an offensive, proactive thing, with the idea being to actively use the mark as a brand. Not in this situation, however. Manziel’s trademark lawyer filed a trademark application most likely as a defense to establish a priority date and to prevent others from exploiting the mark. One caveat for Manziel however, is that in order to actually register a trademark with the U.S. Patent and Trademark Office, at some point he will have to show actual use in commerce, which could be tricky because NCAA rules prevent him from doing so.
One option for registering a trademark in a situation like Manziel’s is to file an “intent-to-use” trademark application. This means that there has been no commercial use of the mark at the time of filing, but there is an intention to use the mark commercially in the future. For a fee, the USPTO will extend the time allowed to show actual commercial use for six months at a time, with a maximum of 5 extensions. This gives an applicant a total period of 36 months from the date an applicant is granted a Notice of Allowance to show use in commerce. If Manziel’s career goes according to plan, he will hope to be playing professionally by that time and will no longer have to worry about violating NCAA rules regarding profiting from commercial sales.
By federally registering a trademark for “Johnny Football”, Manziel will be granted legal rights that make it easier for him to bring a legal action for trademark infringement against others who are using the mark or a confusingly similar mark. In the interim, according to the Yahoo article, Texas A&M has recently sent out eight cease-and-desist letters in a two-week period to people selling “Johnny Football” merchandise, presumably on the basis of common law trademark rights.
When and how to file a trademark application depends on the circumstances of your business. The appropriate time to file a trademark application and deciding between an “intent-to-use” or “in–use” trademark application are just a few of the many things to consider when seeking to protect and strengthen your brand.