Johnny Football's Trademark Woes - A Lesson In Acting Fast

While processing trademark applications for our clients, I often run into interesting tidbits of intellectual property fun, about which I am just sure other people would enjoy knowing. This weekend I stumbled upon the trademark applications for “Johnny Football” that collectively provides a number of important instructive pointers.

The United States Patent & Trademark Office, which handles the federal registration of trademarks, received two applications for “Johnny Football” in late 2012 and early 2013. As everyone knows (even me), “Johnny Football” is a reference to Johnathan Manziel, who played football for A&M for a while, but apparently now plays for the Cleveland Browns. (Note the correct spelling of his first name, by the way. Good sports trivia.)

As is the case with many nicknames of famous people, whoever owns the trademark “Johnny Football” can prevent other people from selling t-shirts and sportswear (depending on details with which I’ll not bore you today). An added benefit to federal registration is that the owner of the mark can obtain better damages and attorney fees in a trademark infringement suit more easily if the mark is federally registered.

The first application to register “Johnny Football”, came from a partnership in College Station in late 2012, but apparently not associated with Mr. Manziel.

The first application (S/N 85769563) was filed by a partnership in College Station in late 2012. The USPTO first asked that the word “football” be disclaimed, a word which here means that the trademark owner could not sue people for using the word “football” because it is merely a descriptive term, and we don’t want to allow people to grab descriptive phrases and take them out of commercial use. The USPTO also demanded that the partnership identify its general partners and their national citizenship.

The partnership dutifully disclaimed “football” and revealed its general partner and his citizenship, and amazingly, the USPTO was preparing to call it a done deal, publishing the trademark for public examination in June 2013.

As it happens sometimes, someone complained to the USPTO, informing it that the mark identified a living person whose consent was not provided. (If you use a popular nick name of a person, you have to have that person’s consent to file the mark.) In its administrative change-of-mind, the USPTO attached about 70 pages of evidence that “Johnny Football” refers to Manziel, and demanded that the applicant provide his consent.

Hilariously enough, the applicant responded with a simple statement that the phrase does not refer to a living person, and the USPTO has disagreed, and the refusal on that application was made final on March 20, 2014.

Manziel entered the scene with his own application in February 2013 (S/N 85839336). The USPTO responded with a requirement to provide Manziel’s consent and a proper specimen, and noting that there were four prior-filed applications that might interfere. One of those was for “JUANITO FÚTBOL” (S/N 85814656), filed in January 2013, and registered in September 2013, for clothing sold at the site, http://juanitofutbol.com/.

Manziel then supplied his consent, which you can find here Cool, huh?

The story is not over, as the USPTO has suspended Manziel’s application because of the four prior registrations, all of which were filed just months before Manziel’s application, and consist of “JOHNNY BASEBALL”, “JOHNNY BASKETBALL”, and the two other applications already mentioned.

My guess is that Manziel will eventually get his trademark registered, after he goes through a lot of work to prove to the USPTO that his mark won’t be confused with “JUANITO FÚTBOL”, or makes a deal with Juanito’s owners.

Anyway, I thought this was pretty interesting. The big lesson is that you need to go grab your nickname as soon as it even looks like you are going to go big-time.

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