Law Article – Sports Stars as Trade Marks, a new area of Intellectual Property Law

Sports stars as trade marks: an exciting new area of intellectual property law

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Trade marks can be used to protect many different types of marks used in business, including logos, words, phrases, fancy text, colours and even sounds. But did you know names can also be registered as trade marks?

In recent years, some of Australia’s most famous sporting icons have registered their names as trade marks as they have moved into new business and charitable ventures.

Ian Thorpe has registered his name as a trade mark in three classes, covering his various business ventures in perfume and cosmetics, jewellery and clothing. Similarly, Greg Norman registered his own name as a trade mark in a number of classes relating to his business interests, including golf course construction, golf instruction and the design of golf courses and clubs. Shane Warne has a number of registered trade marks for ‘SHANE WARNE’ as well as other applications in progress. His marks are in a range of classes covering eyewear, watches, jewellery, leather goods, clothing, games, wines and spirits.

By registering their names as trade marks in this way, these athletes aim to restrict other parties that may try to use their name in connection with selling these kinds of goods or services. Registering a trade mark makes it much easier for them to take legal action against any party who offers infringing items for sale or who use their name in connection with these goods or services without authorisation.

Registering a trade mark can be a useful way to prevent other parties from economically benefitting from the goodwill and fame that has built up in their name.

Registered trade marks don’t just offer protection for business or purely commercial interests, however, and cricket icons Shane Warne, Steve Waugh and Ricky Ponting have all registered their name as trade marks for charitable services.

The estate of Sir Donald Bradman has also been active in registering trade marks relating to Bradman’s name. In registering these trade marks, they can prevent other parties associating themselves with the famous cricketer and potentially earning money from this association. This is an example of how registered trade marks can play a valuable role in reputational protection. Bradman’s representatives have also registered the phrase ‘Bradmania’ as trade mark, an illustration of how words or phrases associated with an athlete can also be worth protecting as trade marks.

In addition to registering his own name as a trade mark in different classes, Lleyton Hewitt has also taken the unusual step of registering the phrase ‘Lleyton & Bec Hewitt’ in one class, providing online information on health.

American athletes have been even more inventive in utilising trade mark protection to help prevent other parties capitalising on the fame they have built up. In a move described as unorthodox but smart by Forbesmagazine, New Orleans basketball star Anthony Davis has registered trade marks for phrases relating to his distinctive monobrow, including ‘Raise the Brow’ and ‘Fear the Brow’. These phrases had become famous as Davis had risen to fame and other parties were starting to cash in on his popularity by selling T-shirts and merchandise featuring the slogans.

When American football star Terrell Owens gave a press conference announcing his move to the Dallas Cowboys he told reporters to “Getcha popcorn ready!”. The phrase soon caught on and Owens registered it as a trade mark. Interestingly, he had also earlier registered his initials as a trade mark. Similarly, when baseballer Bryce Harper dismissed a reporter with the words “That’s a clown question, bro” the phrase went viral on social media and began to appear on shirts and other merchandise. Harper quickly registered the words as a trade mark. Perhaps the most famous phrase an athlete has registered as a trade mark, however, is John McEnroe’s ‘You cannot be serious!’ which he infamously shouted at the many umpires he disagreed with during his colourful tennis career.

Nicknames have also been trade marked. Most notable is the registration of ‘Thorpedo’ by Ian Thorpe. Another sportswear company, Torpedoes Sportswear Pty Ltd, opposed the registration of this mark, arguing that it was identical or deceptively similar to their own trade mark. Thorpe’s fame and the evidence showing this nickname was in common usage were key factors in proving that the two marks were not similar and would not cause consumer confusion. Thorpe won the case and also won again on appeal and has now registered the mark in 13 different classes.

We can learn a couple of things from this trend. Firstly, these often novel trade mark registrations show the value in protecting your name, image and reputation. By registering their names as trade marks, these athletes and former athletes have gained the right to exclusively use of their name in association with the business or charitable activities in the classes their marks are registered in.

Secondly, it shows how versatile trade marks can be in protecting various forms of intellectual property.  Many people associate registered trade marks with distinctive commercial logos like the McDonalds arches or the Nike Swoosh, but these applications are a valuable reminder that people’s names, initials, nicknames and signature phrases can all be protected by trade mark registration. Words associated with the athlete can also be protected this way – recently basketball star Jeremy Lin won a battle against several other parties to register the word ‘Linsanity’ as a trade mark. The phrase, which was frequently used in reference to the hysteria around Lin’s sudden rise to fame, had initially been used by another NBA player.

Finally, these trade mark registrations show that in one sense athletes and prominent individuals can be thought of as brands. There is an inherent value that has been built up in their brand names and like any other business, they need to take steps to protect their brand name and prevent others either capitalising on its value or diminishing its value by using it in ways the individual doesn’t want. Often the real value of a business lies in the intellectual property rather than the physical property a company may have built up.

Originally appeared on: Terri Janke and Company website