Trademark Registration for NCAA Athletes
With the recent NCAA rules change allowing college athletes to protect and profit from their names and likenesses, student athletes should quickly consider registering their names as trademarks.
It is a registered trademark that will enable NCAA athletes to not only profit from the brands that their names certainly represent—but, most importantly, to protect themselves from infringement, knock-off products, and other nefarious trade activity.
First, let’s review some basics about US trademark registration generally and personal names specifically.
What Is A Federal Trademark?
A trademark registered on what is called the “Principal Register” of trademarks maintained by the US Patent and Trademark Office (USPTO) is your right to exclusive use of your business name, product name, slogan, or logo in commerce in the United States.
It is one of the intellectual property rights available for ownership in the US, along with copyright and patent ownership.
A trademark is not, however, like a copyright or patent ownership. You are not entitled to exclusive use of your name in relation to the sale of a product or service just because it’s your name.
To be eligible for Federal trademark registration, a name must be used—in trade. That is, in commerce across state lines.
You must be selling something in relation to your name in order to register it as a trademark.
Further, there are other requirements for registering a name as a Federal trademark.
- Your Name Must Be Sufficiently Unique
Uniqueness is a basic requirement for any trademark registration. A business or product name cannot be generic, and it cannot merely describe the services or products being offered.
The example often used in other trademark blog posts on our site is a company selling hammers in the Metro Detroit named “The Detroit Hammer Company.”
Such a name merely describes the product being sold and the geographic area in which it is sold. An application for registration of a trademark for a descriptive name will run into problems when it is filed with the USPTO.
A name must specifically identify you as the source of your product or service. There cannot be any likelihood that the name would confuse a US consumer as to who is selling what.
How does this requirement apply to the name of an NCAA athlete?
It’s a bit awkward to consider, but, the more esoteric your name happens to be as an NCAA athlete, the more “unique” it will be for trademark purposes.
If your name is “Tim Jones,” there will be some opportunity for the USPTO Examiner reviewing (and approving or denying) your application to refuse your trademark registration on the basis that there are many people with that same name. Possibly one or more who have already registered a trademark (see below).
If your name is “Methuselah Cowznowfowski,” on the other hand, the odds of this happening are clearly smaller.
- Your Name Cannot Already Be Registered (For Similar Services or Products)
Likewise, your name as an NCAA athlete cannot already have been registered by someone else for the sale of similar products or services.
If the Trademark Register contains a pre-existing registration for the same or similar name, it will be refused on the basis that dual registrations will be likely to confuse consumers.
Are there arguments around this?
Yes. This is one of the reasons you need to file your trademark registration application for your name as an NCAA athlete with the assistance of an experienced trademark lawyer. (See more information below regarding the reasons to retain a trademark attorney.)
Nevertheless, it is a requirement for US trademark registration: your name, whether that of a business or the actual name of human being who happens to be an NCAA athlete, cannot already be registered.
- Your Name Can Only Be Registered With Your Consent
A further requirement with regard to the registration of a name as a trademark is that it be done only with the consent of the person named.
The USPTO TEAS application form, in fact, requires an affirmative declaration that this consent has been lawfully and honestly obtained.
This is the reason that people cannot go around registering the names of celebrities as trademarks for their own use.
What Does a Registered Trademark Do For You?
A registered trademark will allow you to control the commercial of your name as an NCAA athlete—and beyond.
A registered trademark has no expiration date. Unlike copyright or trademark protection, a registered trademark does not elapse so long as you continue to use it in commerce.
A registered trademark provides the following benefits:
- Prevents others from registering your name as a trademark without your knowledge;
- Allows you to sue for trademark infringement in Federal Court;
- Allows you to protect your name—and also your logo, Instagram, TikTok, Facebook, and other social media handles and user-names from infringement;
- Allows you to have infringing products blocked from import into the US by US Customs;
- Allows you to use the ® symbol with your mark in advertising and social media;
- Provides you the legal presumption of ownership across all 50 states.
As an NCAA athlete, your name is your brand. It had value to the NCAA (and thus the US Supreme Court case that led to this rules change)—and it has value to you.
A brand’s value arises from its enforceability as a trademark.
What Service or Product Does an NCAA Athlete Sell?
So what “service” or “product” does an NCAA athlete (or any other athlete) provide to support a claim that a name is a trademark used in commerce?
The answer to this question can vary widely depending upon your commercial activities. An experienced trademark attorney should be consulted to discuss this in detail.
That said, a few examples from the USPTO database may be instructional.
For example, Lebron James (via a holding company) has registered a trademark here for LEBRON in Class 41 for the following services:
“Entertainment services, namely, providing on-line, non-downloadable virtual products for use in virtual environments created for entertainment purposes; providing a website featuring non-downloadable photographs and videos; organizing, conducting and hosting events in the interactive entertainment, virtual reality, sports and video game entertainment industries; virtual basketball courts, gyms, and recreational facilities for playing sports in the metaverse and virtual worlds …”
Lebron James has also recently filed a trademark application for his NFT collection.
In a more recent example, Joel Embiid finalized his registration for THE PROCESS in Class 25 for “apparel, namely, shirts, sweatshirts shorts, sweatpants, hats, flip flops.”
A trademark can be registered in relation to a variety of other services or other products, including personal appearance or lecture services, basketball camp services, a variety of entertainment field-related activities, podcasting, blogging, and more—including licensing of one’s likeness and other personal features for other products.
The primary point here is that, whatever product or service is being marketing under your name as an NCAA athlete, it is going to have be specified on your trademark registration application and that use in commerce will need to be provided to the USPTO to obtain final approval.
Does an NCAA Athlete Need a Lawyer to File My Trademark Application?
Can you file a trademark registration for your name as an NCAA athlete on your own? Without a trademark lawyer?
Yes. You can.
It just isn’t the best way to maximize your odds of a successful trademark registration.
A US-licensed trademark attorney will run a thorough clearance search prior to the filing of your application to ensure that your name is available for your own registration as a trademark (see above).
A trademark lawyer will be able to provide you the legal advice that you need to determine what, exactly, your use in commerce consists of and whether or not your name is registrable as a trademark on its face.
A trademark lawyer will expertly draft your application to avoid needless costly and time-consuming errors.
A trademark lawyer hired from the start will be well-position to respond to any USPTO Office Action refusals filed.
A trademark attorney will draft and file your required Statements of Use, Declarations of Incontestability, will monitor the USPTO register to ensure that no infringing applications are filed, and will help you to enforce your mark through its lifespan.
As a college athlete, worrying about your intellectual property rights may not be at the top of your priority list. You’re worrying about performance, prospects, your stats, and, yes, your grade-point average.
A licensed trademark attorney can carry this particular load for you.
Limits on NCAA Athletes’ Trademark Use Under the NCAA Interim Policy
The final NCAA rule is expected to be issued in July, 2022.
In the meantime, NCAA athletes should understand that there remain a few boundaries to players’ ability to generate income as student-athletes.
For instance, if you play in a state with laws or executive orders in place, your activity must be consistent with those guidelines.
You may need to report your activities consistent with the requirements of Michigan or other state law concerning your name, image, or likeness profit-generating activities.
If your state lacks an applicable, other NCAA regulations, such as pay-for-play and impermissible inducement rules, remain in effect.
Trademark Registration for NCAA Athlete Names: The Bottom Line
The bottom line is that, if you are an NCAA or other collegiate athlete, your name, image, and like ness do represent a brand with significant potential value.
If you have not considered the possibility of trademark registration to protect that brand, you should consult with a trademark attorney in Michigan or elsewhere to discuss your options.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting craft brewers, vintners, distillers, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.
Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.