When most people retire, they think about long walks on the beach, playing golf, and generally enjoying some free time. How did Tom Brady enjoy his two weeks of retirement from the National Football League? He filed over 40 trademark registrations at the U.S. trademark office. These trademark applications are for his name and autograph in connection with a variety of goods and services ranging from endorsement services to digital token transfer services (NFTs). The only question I have is --what took him so long?
As illustrated in my series of trademark articles on athletes and the importance of protecting your personal brand, athlete's names, autographs, and other aspects of their public image are source identifiers. As such they are capable of federal trademark registration and often provide valuable rights to exclude others and create additional revenue streams.
Tom Brady is a household name and I would expect that his name has been used routinely in endorsement deals and other revenue streams that would have justified trademark registration long before his most recent retirement. That said, use is not a pre-requisite to filing. Indeed Tom's recent filings reflect the fact that he has not begun using his name as a brand on all of the goods/services.
These filings take advantage of the intent to use (ITU) filing process, which allows a trademark filing before actual use has begun in commerce. This allows athletes to preemptively file for protection and establish use within a three year period to secure registration. In terms of timing, this is an advantage for younger athletes to start establishing their trademark rights ahead of actual endorsement deals. As demonstrated, even established athletes can benefit from the ITU procedure when they are looking at new product or service offerings.
Federal trademark registration provides key benefits in that it protects a brand throughout the U.S. and is a powerful tool in ensuring authorized use of an athlete's name or other source identifier. A federal trademark registration is very powerful in social media and online retail contexts. Often the policies that govern IP enforcement on these sites require a federal registration before they will take action against an unauthorized user. As a result, trademark registration is critical for athletes and, perhaps as importantly, their endorsement/sponsorship partners in stopping unauthorized uses of the athlete's personal brands.
Certainly, not every athlete will offer the scope of goods and services reflected in Tom's recent trademark filings, but most athletes routinely provide endorsement services or have their names used in connection with other goods and services early on in their pro career. As illustrated in my last article, even at the high school and collegiate level, athletes are quickly becoming micro and macro influencers where their name is a brand. https://www.cuecardslegal.com/post/athlete-endorsement-is-your-personal-brand-protected
When representing athletes, my minimum recommendation for trademark protection includes the athlete's name and signature. Other aspects to consider include the car number, uniform number, nicknames and other features that identify them or their company as a source. See for example, the recent dispute over Kawhi Leonard's claw logo. https://www.cuecardslegal.com/post/copyright-licensing-lessons-kawhi-leonard-klaws-back-rights
Another consideration is that trademarks can be continuously renewed as long as they are in use. This differs from rights of publicity that are tied to the life of the athlete and may not protect an athlete's heirs or corporate entities which may continue to use the athlete's name as a brand after rights of publicity have expired. Given the value of federal trademark protection, my key takeaway is to have the trademark registration conversation early. You can always file additional registrations as the scope of use expands or abandon registrations that no longer fit your current use. If you are an athlete or represent athletes, I recommend contacting an IP professional to determine the best IP strategy.