By: Alexander Tranquil

In the early 2000s, it felt like personal trademarks in athletics were reserved for the select few that attained superstardom. With distinguished names like LeBron James, Tiger Woods, Roger Federer, and Cristiano Ronaldo coming to mind, possessing a personal trademark meant that an athlete had reached the pinnacle of their sport. However, this yardstick of athletic success appears to be shifting with the advent of name, image, and likeness (NIL) rights in college athletics. In the now-famous NCAA v. Alston decision, the Supreme Court found that the denial of education-related benefits for student-athletes violated federal antitrust laws, paving the way for athletes to profit off their NIL rights through endorsements, merchandising, and licensing deals. With some college athletes now making millions of dollars a year through NIL, several have taken the leap into branding by registering trademarks with the United States Patent and Trademark Office (USPTO). Currently, the bulk of these trademark applications are filed by colleges’ top NIL earners, but this raises the question: should less-famous athletes follow their lead, making ownership of trademarks the new norm in college sports?

Ultimately, registering a trademark with the USPTO represents an additional or auxiliary protection for athletes looking to profit off their NIL rights. In every U.S. state, an athlete’s NIL rights are already protected under state right of publicity laws or, if unavailable, the common law tort of appropriation. While these existing protections may vary in scope, both the right of publicity and the tort of appropriation provide financial remedies to individuals when their name, image, identity, or likeness is used without permission for commercial benefit. For college athletes looking to leverage their fame into new NIL deals, legal protection over their identity is critical. Ultimately, these existing protections allow them to control where and how their likeness is used, protecting their NIL profits by preventing false endorsement, advertisement, and sponsorship. Ever wonder why EA Sports had to stop making their popular NCAA sports games? Under the right of publicity, courts found that EA Sports alluded to college athletes in the game, failing to sufficiently transform the players’ identities. 

In this way, trademark law and existing right of publicity laws protect against the same wrong: infringing use. Like the right of publicity protects against unauthorized uses of an individual’s NIL, a trademark protects any word, phrase, or symbol that a party uses to identify their products. When an athlete registers a trademark with the USPTO, it grants them nationwide ownership rights over the mark, providing consistent legal protection in every U.S. state against unauthorized uses of the mark by third parties. But since the focus of athletics is on the athletes themselves, many personal trademarks concentrate on the athlete’s name, signature, personal logo, or catchphrase. Inherently then, personal trademarks, like the right of publicity, protect name, image, and likeness rights in the commercial sphere. For example, former Heisman Trophy-winning quarterback Johnny Manziel was able to secure a settlement by raising both trademark infringement and right of publicity claims against an infringing party selling “Johnny Football” labeled merchandise.

While Johnny Football may have had the means and motivation to apply for a trademark, still, filing a trademark may not be practical for all college athletes. Specifically, seeking trademark protection requires a party to apply, register, and maintain their registration with the USPTO. This can be both a costly and labor-intensive process. Not only must an applicant show that their mark is distinct from other registered trademarks, but, before registration, they must establish use in commerce. This requires the applicant to adopt a proactive, business-minded strategy, showing that their mark has been actively used in connection with the sale of a good or service. Further, between application and attorney’s fees, athletes can expect to pay anywhere between $1,500 – $4,000 to register a trademark. Although not terrifically expensive, this is not a drop in the bucket for most college athletes, especially if, like Paige Bueckers or Olivia Dunne, your trademark eventually gets denied by the USPTO. 

Furthermore, assuming an athlete can obtain a trademark, they may be frustrated with the scope of its protections. Overall, trademark law is constrained by the likelihood of confusion doctrine. This doctrine requires the plaintiff to not only show that consumers are likely to associate an infringing mark with the plaintiff’s trademark, but also demonstrate that the infringing product is sufficiently related to the plaintiff’s to induce confusion. In contrast, the right of publicity offers a far broader scope of protection. For example, in White v. Samsung, Vanna White, the famous hostess of “Wheel of Fortune,” prevailed on a right of publicity claim after Samsung ran a commercial featuring a robotic replica of her turning letters on a TV set. Here, no infringing trademark was used, however, the Ninth Circuit found that the right of publicity “does not require that appropriations of identity be accomplished through [any] particular means,” thus widening the scope of identity misuse to include the commercial use of another’s likeness. In fact, some critics now argue that the rights afforded under the right of publicity have “swelled [] to the point [that] virtually any reference to an individual that brings financial benefit to someone else qualifies as a violation of the right of publicity.”

So, with these shortcomings of trademark law, why then are trademarks attractive to athletes? Because they have the opportunity to build a brand. Trademarks identify the source of a product, and, therefore, an athlete’s mark can quickly draw attention from fans that want to be associated with a particular player. In this way, personal trademarks engage the public, facilitating future marketing opportunities, maximizing NIL profits, and promoting the sequential growth of an athlete’s brand. With every athlete’s dream of becoming the next Michael Jordan with his immortal Jumpman logo, ultimately, trademarks allow an athlete to cultivate an image and develop their own unique identity. Recently, we have seen Shedeur Sanders roll out apparel featuring his signature ‘dollar-sign squared’ mark that, at least in part, allowed him to gain a strong following and led him to be the first college football player endorsed by Nike. 
Still, Sanders’s success and his designation as the top NIL earner highlights the trademark dilemma: balancing the pros and cons of trademark protection often hinges on an athlete’s popularity and their following. Overall, athletes should consider filing a trademark application when their names start to take public recognition. At this point, the potential for significant brand growth provided by a trademark is likely to offset the potential headaches of developing a business strategy and registering a trademark. Unfortunately, for the many college athletes that are not top NIL earners, the limited benefits may not justify the time, effort, and costs associated with pursuing trademark protections.