In one of the most widely anticipated college football bowl games of the season, Texas A&M University will play Oklahoma University in the AT&T Cotton Bowl on Friday, January 4, 2013. The game is widely anticipated largely due to the breakout season of Texas A&M freshman quarterback Johnny Manziel, who in December 2012 won the Heisman Trophy. The Heisman is bestowed annually to the most outstanding college football player in the United States. Manziel was the first freshman ever to win the award. Due to his impressive play, fans and commentators have come to refer to Manziel as “Johnny Football.”
As reported by Bloomberg News, Manziel and his family have expressed their intention to protect “JOHNNY FOOTBALL” as a trademark. In fact, a Texas A&M official confirmed that “the Manziel family is working in conjunction with the university to protect the trademark, the player’s likeness and the freshman’s eligibility [to play collegiate athletics].”
Registering one’s name and/or nickname as a trademark has certain advantages, particularly in the case of a sports star/celebrity. A trademark registration would provide Manziel with more control over the use of his nickname in connection with merchandise, such as clothing. In addition, as discussed in our previous blog regarding Robert Griffin III, a less apparent but perhaps equally important benefit is that trademark rights can be used as a vehicle to stop a third party from using a domain name that incorporates or is confusingly similar to one’s trademark (e.g., johnnyfootball.com).
The NCAA, the organization that governs collegiate athletics in the United States, has stringent rules that prohibit a player and his family from profiting from his or her athletic involvement while a collegiate athlete. Following this year, Manziel will have three more years of collegiate athletic eligibility, although it is common for outstanding players to leave college early to play professionally. So long as Manziel continues to play collegiate athletics, he will be prohibited from using the mark “JOHNNY FOOTBALL” in commerce in connection with products and/or services.
In November 2012, an entity known as Kenneth R. Reynolds Family Investments, LP filed an intent to use trademark application to register “JOHNNY FOOTBALL” for electronic game software, athletic shirts, jackets, sports jerseys, sports shirts and footballs. Some reports have suggested that the owner of this application may have ties to Texas A&M. On the other hand, an attorney representing the Manziel family has indicated that this entity is unrelated to Manziel and that the trademark application would be opposed. Nevertheless, Texas A&M is
actively policing the trademark by sending cease and desist letters to stop trademark infringement.
It is unclear whether Manziel will be able to successfully oppose the current application. Manziel has not yet used the mark in commerce and will be prohibited from doing so for the foreseeable future. It would therefore appear that the most commonly asserted grounds for opposition, namely, priority of use and likelihood of confusion, would be unavailable. Manziel may argue that the trademark falsely suggests a connection with his name or identity and therefore the current application should be refused. This is not, however, a situation where a third party is using his actual name, so he would likely need to establish that the nickname “JOHNNY FOOTBALL” has become synonymous with his actual name.
There are no other pending “JOHNNY FOOTBALL” applications on the Trademark Register. If the current Applicant is truly unrelated to Manziel, it is somewhat strange that Manziel has not yet filed his own intent to use application to establish his rights. Upon approval of such application, Manziel would have three years to begin to use the mark on products or services in commerce. If the current Applicant does indeed have ties to Texas A&M, this may explain why Manziel has not yet taken action of his own. In order to ultimately establish his rights, Manziel will need to either oppose the current application or attempt to acquire Applicant’s rights in the mark.
