Jeremy Lin (“Lin”) is a professional basketball player with the New York Knicks who, until recently, toiled in obscurity, but has managed to turn an opportunity to start for the Knicks into overnight stardom. Lin attended Harvard University, but was not drafted out of college. He later was a reserve with the Golden State Warriors and Houston Rockets before being waived by both teams. From the time that the Knicks began providing Lin with significant playing time in early February, due in part to the unavailability of other “starters,” the Knicks have won seven straight games. Lin has been an integral part of several wins, hitting game-winning shots and providing timely assists. His outstanding play has revived a previously lethargic Knicks franchise and fan base. The fact that Lin came out of nowhere to become an overnight NBA success has caused many in the media to label this unprecedented phenomenon as “Linsanity”, a play on words combining Lin’s last name and the word “insanity.”
Apparently seeking to capitalize on the suddenly vogue term, two individuals who are not connected to Lin have filed trademark applications with the United States
Patent & Trademark Office (“PTO”) seeking to register “LINSANITY” as a trademark for various types of apparel including caps, t-shirts, athletic uniforms, etc.
The filing of these applications caused us to think about the trademark rights that Lin has in his name, and whether he can prevent two unrelated applicants (who incidentally are not named Lin) from registering a mark that incorporates his name and is a well-known reference to his unexpected, outstanding play.
Arguably, the very fact that “LINSANITY” is a recognized reference to Lin should mean that he alone should have rights in the term as a trademark. In essence, “LINSANITY” is his overnight pseudonym with attendant secondary meaning. It also includes, as its primary focus, his surname. For these reasons, one could make a case that the PTO should not allow anyone else to register the term without Lin’s consent.
As a preliminary matter, the law generally frowns upon the adoption of another’s name for the purpose of pecuniary gain, whether as a trademark or as part of an Internet domain name. Generally, such conduct is viewed as bad faith adoption, which in trademark cases may often be used to support a finding that the Applicant is not entitled to use the mark.
In this case, there are several grounds upon which the PTO may reject the pending applications. Section 2(a) of the Lanham Act precludes federal registration for matter which may falsely suggest a connection with persons living or dead. 15 U.S.C. § 1052(a). In this case, given the widespread use of “LINSANITY” in the press in reference to Lin, the PTO could certainly conclude that the term falsely suggests a connection with him.
In addition, Section 2(c) of the Lanham Act bars the registration of a trademark that “consists of or comprises a name . . . identifying a particular living individual except by his written consent. . .” 15 U.S.C. § 1052(c). Significantly, the statute has been interpreted to cover composite marks that include a surname along with other matter. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §13.37 n.11 (2010). Given that “LINSANITY” incorporates Lin’s surname as its primary focus, the USPTO may well conclude that the mark identifies Lin and therefore his consent would be required before it can be registered.
Furthermore, Section 2(e) of the Lanham Act bars registration of a “mark which . . . is primarily merely a surname.” 15 U.S.C. §1052(e). The determination of whether a mark is “primarily merely as surname” involves the consideration of several factors, including, but not limited to, the rarity of the surname in question and whether the designation has a recognized meaning as other than a surname. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §13.30 (2010). In making this determination, the PTO evaluates the mark as a whole.
Id. Here, because the mark is comprised of the surname “LIN” together with other non-surname matter, the PTO may well conclude that “LINSANITY” is not primarily as surname. On the other hand, given that the mark is widely recognized as referring specifically to Lin, it is possible, albeit unlikely, that the PTO could deny registration of “LINSANITY” on this basis, as well.
In the unlikely event that a pending trademark application for “LINSANITY” ultimately matures into a registration and use of the mark commences, Lin would appear to have a cause of action for false designation of origin under the Lanham Act. Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides for a civil action against:
“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . .” (emphasis added).
Therefore, to the extent that consumers are likely to associate the mark “LINSANITY” with Lin, the use of the mark on caps, t-shirts, athletic uniforms and other items of clothing may well cause consumer confusion and/or deceive customers into believing that such goods originate with, or are authorized or approved by, Lin. In such a case, Section 43(a) of the Lanham Act provides a vehicle through which Lin could challenge the unauthorized use of “LINSANITY”.
In the event that you have questions regarding the adoption and/or registration of trademarks, we recommend that you consult with an experienced trademark attorney prior to adoption, which may save you substantial time and expense in ultimately adopting a proper mark.
