Tom Brady’s attorneys recently filed a trademark application for the nickname ‘Tom Terrific,’ and the news quickly spurred backlash from fans of the New York Mets.
You see, legendary Mets pitcher Tom Seaver was dubbed ‘Tom Terrific’ by the media long before Brady was ever even a Patriot. Moreover, it seems the athlete’s attempt to get ahead of the bad press has only led to more scrutiny – and a likely denial – of his trademark request.
Interestingly enough, it may be possible to glean insights into Brady’s situation from Beyonce’s similar trademark battle over her daughter’s name. Both celebrities have been accused of fraud against the USPTO.
Years into the Trademark Battle, BLUE IVY CARTER Is Still in Limbo
Jay-Z and Beyonce have been working on trademarking their daughter’s name, Blue Ivy Carter, since 2012. The filing faced a dispute by a relatively successful event planner and Harvard graduate. Her national firm had been operating under the name Blue Ivy Events since 2009.
Court documents argue that “no one is going to be confused between a boutique wedding event planning business and…the daughter of two of the most famous performers in the world.”
While this is probably true, the wedding planner postulates that the Carters are squatting on a name she has used for years in commerce. This poses a quite valid question of USPTO fraud, and the Carters are currently slated to go to trial.
The Lanham Act Prohibits the Registration of Mere Surnames
The Lanham Act (Section 2(e)(4)) prohibits the registration of merely a surname. However, it does provide that if the public has come to understand someone’s name as a trademark, it may be granted trademark protection.
In order to prove its significance, the registrant may show its acquired distinctiveness by the following means:
- The name is widely used to sell specified goods and/or services.
- The public identifies the name as being the source of those goods and/or services.
When no commerce takes place and no products or services are associated with a given name, then it may not be registered as a trademark.
Additionally, when you file for a trademark, you are required to declare a good faith intent to use the name for commercial purposes — not just to prevent anyone else from using it to make money.
Tom Brady and Jay-Z Said Nearly the Same Thing
Early in the dispute, Jay-Z spoke to Vanity Fair about registering for Blue Ivy’s trademark in this way: “People wanted to make products based on our child’s name…and you don’t want anybody trying to benefit off your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything.”
Similarly, during a press conference about Mets fans’ backlash, Tom Brady claimed nearly the same thing. He only filed for the trademark “to make sure no one used it because some people wanted to use it,” and “It wasn’t something I was trying to do out of any disrespect or ill manner or anything like that.”
It seems neither Tom Brady nor Jay-Z had any intention of using either name for the purpose of commerce. In both cases, a lot of money and time will be spent on trademarks that both parties claim they never intended to use.
As of August 22, 2019, the USPTO issued an Office Action refusing to register the trademark TOM TERRIFIC based on a false suggestion of a connection with Tom Seaver plus it is a reference to a living individual who needs to give consent to use his name. Now, Tom Brady and his lawyers have six months to decide if they want to file a response and fight the decision of the USPTO.
The opposition against the registration of BLUE IVY CARTER is still pending before the Trademark Trial and Appeal Board.
Both celebrities should expect to have a tough time registering their alleged trademarks with public statements like these on record.
At least two lessons can be learned from these two cases:
- Do not file a trademark application for a mark that you have no intention of ever using and then publicly announce this fact
- Do not file a trademark application for a mark that includes the name of a living person without their consent
If you need help filing a trademark application, contact Marks Gray IP attorney Crystal Broughan at [email protected] or 904-807-2180.