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Re:Marks on Copyright and Trademark

Johnny Football’s Hobson’s Choice

By Michael Geller 

Johnny Manziel, the freshman phenom quarterback of the Texas A&M (“A&M”) Aggies football team, wants to own the ultimate status symbol for super star athletes – his own trademark.  In only his first season under Saturday night lights, Manziel has reinvigorated the proud football tradition at A&M, landing the school at #8 in the college football rankings as of this week.

Manziel is a legitimate star on campus, so it came as little surprise when his name showed up at the United States Patent and Trademark Office (“USPTO”) on the first day of November.  An entity entitled Kenneth R. Reynolds Family Investments, LP filed a section 1(b) intent-to-use trademark application for the mark JOHNNY FOOTBALL for “electronic software” “athletic shirts; jackets; sports jerseys; sports shirts” and “footballs.”  Although no one has been able to confirm that the trademark owner, Kenneth R. Reynolds Family Investments, LP is connected to Manziel, it has been reported that A&M and the Manziel family are working together to try and trademark JOHNNY FOOTBALL.

As an intent-to-use filing under Section 1(b), Manziel must eventually use the mark in commerce to secure a federal registration.  After the mark is “allowed” by the USPTO, Manziel has a maximum of three years (assuming Manziel pursues all possible extensions of time) to use the JOHNNY FOOTBALL trademark in commerce. 

This is where Manziel, also known as Johnny Football, faces his Hobson’s choice.  NCAA rules forbid players or schools from putting a player’s name or likeness on items for sale.  Specifically, the NCAA permits only schools, school organizations, athletic conferences or “noninstitutional charitable, education or nonprofit agenc[ies]” to use player likenesses. While a license to A&M or a charity may navigate around that rule, Section of the NCAA Division I Manual forbids an “individual student-athlete’s name, picture or likeness (e.g., name on jersey, name or likeness on a bobble-head doll)” to be sold on merchandise.  This rule explains why college bookstores and major sports retailers cannot sell college football jerseys with a player’s name on the back.  Thus, Manziel’s dilemma – use the trademark and violate NCAA rules, or play by the rules and lose the trademark. 

Manziel may also have a race against the clock.  Remember – Manziel is only a freshman now.  So, depending upon when the mark is “allowed,” there’s a chance Manziel’s three-year time period to use the mark may end before his playing career at A&M.  Again, depending upon if and when the application is allowed, the three-year deadline will likely be sometime in his senior year.  Ultimately, if the application is allowed, it will be allowed sometime after January, which would mean Manziel’s three-year period to use the mark would be after his senior football season.  All of this, of course, only matters if (and this is a big if) Manziel stays all four years at A&M and does not jump early ship for the professional ranks.

There are still possible loopholes for Manziel to explore, such as whether JOHNNY FOOTBALL is actually a “name or likeness” forbidden by NCAA rules.  For the meantime, A&M and Manziel are happy to have leverage over others.  ESPN reported that both A&M and the Manziel family claimed that filing for trademark protection is about preventing others from using the JOHNNY FOOTBALL moniker, not making a commercial profit.  Trademark law, however, is about protecting commercial use of confusingly similar marks in the connection with related goods and services in the same or related field and therefore is intended to prevent people from squatting on trademarks to prevent others from using terms or phrases.  Eventually, Manziel will have to claim his celebrity status symbol or risk losing the right to use JOHNNY FOOTBALL.

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