The latest high profile trademark controversy involves two iconic sports figures – Hall of Fame baseball pitcher Tom Seaver and New England Patriots football quarterback Tom Brady. Tom Brady’s sports management company recently filed two trademark applications to register with the U.S. Patent & Trademark Office (USPTO) “Tom Terrific.” While the applications are filed in two separate International Classes – one for trading cards and the like, and the other for tee shirts and wearing apparel, they were filed as “Intent to Use” vs. actual “Use in Commerce” applications. This means that nothing has been sold with the “Tom Terrific” logo as yet by the Tom Brady management company applicant.
As you might expect, fans of Tom Seaver, including the New York Mets baseball team with which he spent 12 years, are not pleased with this alleged “poaching” on the part of Tom Brady promoters. It will be interesting to see whether any Tom Seaver representatives file a formal protest to the Tom Brady Tom Terrific registration application or if the USPTO’s own Examining Attorney(s) reviewing the two applications initially refuse to allow registration and on what grounds they might be denied registration.
In any event, it would be fairly difficult for the Tom Brady USPTO registration applicant to claim any exclusivity. Nor would it be able to make a very convincing argument that there would be no confusion in the minds of the public as to the source of “Tom Terrific” for any of its trading cards or apparel. Even if the Tom Brady-related applicant is successful in securing trademark registration of the “Tom Terrific” mark, because the Tom Seaver contingent can cite prior, long-term use of this same logo/expression over many years to describe Tom Seaver, the Brady Bunch most likely will not be able to prevent continued use of “Tom Terrific” in conjunction with Tom Seaver.
In baseball terms, at the bottom of the ninth, carefully check previous use of pithy phrases before going Yogi into commerce with deja vu all over again.
Stay tuned!
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Pellegrin’s BriefCase SM/©
Volume 3, Issue #4, June 2019
#trademark #intellectualproperty #IP #TomSeaver #TomBrady #Baseball #Football #Mets #Patriots #law #legal
Author’s Background and Caveats: ADVERTISING MATERIAL. John Pellegrin has a robust business law and management consulting practice. Areas of expertise include business transactional and succession/exit planning, communications, IT/IP, and wills/trusts/estates. He practices before various government agencies, including the FCC, FTC, USPTO, Copyright Office, FDA, EPA, U.S. International Trade Commission, and SBA). He and his firm represent a plethora of entities, including nonprofit organizations. John is available to advise on various legal and management issues, as well as serve as an expert witness in certain situations. He is a graduate of Georgetown University (B.S.B.A. – Management) and Fordham University School of Law (Juris Doctoris), and is admitted to practice before the U.S. Supreme Court, as well as courts in Virginia, District of Columbia, and New York.
Nothing contained in Pellegrin’s BriefCase is to be taken as the last word on any given subject discussed nor relied upon as legal advice; rather, the author’s comments on emerging trends in business and prescient decisions in the law and government regulations/interpretations/policies are meant to make the reader more aware of trending issues and risks.
Legal and Business Consulting Services. The author views his and his firm’s role as legal counsel being available to “define the scope of the risk” for clients. John also serves as Of Counsel to the law firm of Allred, Bacon, Halfhill & Young, PLC. He balances his full-time practice with active involvement in several community-based organizations. These include serving as Chairman/At Large Commissioner on the Fairfax County Small Business Commission; Rotary Club of West Springfield; Boy Scouts of America; National Eagle Scout Association; MVLE, Inc.; various Chambers of Commerce; MEPC (McLean Estate Planning Council), and the Purveyors Club (Foodservice/Hospitality industry resource). He has been recognized and honored with several awards over his lengthy legal career as well as for his community involvement and service, including a Satellite and Private Cable communications magazine Golden Receiver Award, two Community Champion Awards (Springfield District & At Large), Volunteer Fairfax Award), and Rotary International’s Distinguished Service Award.
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