By: Bruce Siegal, Esq.
Those following college athlete name, image and likeness (NIL) issues, are well aware of the hot topics facing the NCAA, collegiate institutions, collectives, college athletes, legislators and others. Will Congress pass federal NIL legislation as states continue to go their own way? How will the NCAA fare in ongoing litigation regarding NIL damages recovery and “employee” status? Will the NCAA enforcement efforts ramp up? While these high-profile issues remain fraught with uncertainty, one thing for certain is that college athletes should be taking steps to secure maximum protection for their valuable NIL rights – to monetize their brands, ward off infringers, and protect their reputations.
What are the available forms of NIL protection for college athlete ? NIL may be protected against infringement under both the right of publicity law and the law of trademarks. Both are available in the arsenal of IP enforcement weapons.
RoP . NIL is a set of personal rights grounded in the law of right of publicity (RoP), essentially, the right to control the commercial use NIL, including many aspects of one’s identity – name, likeness, nickname, signature, picture, jersey number, and even gestures or mannerisms. NIL is protected under state laws and statutes, with their scope and duration varying widely by state. There is no federal right of publicity law.
Trademark law . Trademark rights, on the other hand, are governed by both state and federal law and statutes, including the federal Lanham Act . During my tenure as an executive and general counsel in the collegiate licensing agency space, I worked directly with collegiate institutions as we began to secure trademark protection of their valuable trademark rights, beginning when collegiate institutions were first implementing trademark licensing programs. Professional athletes (Michael Jordan, for one), actors, musicians and others have recognized and taken advantage of trademark protection. College athletes should be following these leads and taking the additional steps to avail themselves of trademark protection, which is additional to protection under RoP.
College athletes can acquire trademark protection for their names, nicknames, slogans or logos. Almost any word, symbol or device can be a trademark if it indicates to consumers that the athlete is the source of a given service or good. For example, college quarterback Graham Mertz has a fanciful design mark based on his initials that he uses to represent his personal brand. Others, including Justin Field, Trevor Lawrence, and Tua Tagovailoa, were proactive in seeking trademark protection for their respective names and nicknames. Athletes may coin a trendy phrase, which could turn into a successful branding campaign. UCLA basketball player LaVar Ball filed for trademark protection for “Big Baller Brand” back in 2017, for his for his three sons: Lonzo, LiAngelo, and LaMelo Ball. The sooner athletes file to register their trademarks, the better, in terms of ensuring that their marks are clear for use and available for registration.
How can a college athlete secure IP protection? No formal procedure is involved to obtain NIL protection against unauthorized commercial use under the various state NIL right of publicity laws, and trademark rights are acquired under common law by consistent use of the mark in commerce and public recognition of ownership.
Registering an athlete’s trademark with the United States Patent and Trademark Office (USPTO) provides additional levels of protection against unauthorized use. To obtain such federal registration, a trademark must be used in commerce and classify goods or services. For example, if a college athlete uses his/her trademark to identify a social media account or posts where he/she sponsors products, the mark should likely be filed under Class 35- Advertising and Business; marks used on apparel should be filed under Class 25 – a broad category covering apparel like clothing, footwear, and headwear.
Best Practice While federal registration is not required for athletes to earn money from their NIL, it is a best practice because registration provides stronger, nationwide rights. These rights include the use of the ® symbol, the legal presumption of ownership, and the ability to bring lawsuits concerning the trademark in federal court. Additionally, these trademarks will be listed in the USPTO database, which gives notice to anyone looking to register similar marks.
Note that if a mark is unregistrable, conflicts with another mark, or is filed incorrectly, time may be wasted, and costs incurred. I have followed applications filed by college athletes, and problems can definitely happen. For example, UConn basketball star Paige Bueckers filed to register the phrase “PAIGE BUCKETS,” and the application was recently abandoned following an opposition filed by a prior user and registrant of various PAIGE marks.
If college athletes want to register trademarks effectively and efficiently, they should contact a trademark attorney to assist in the process. We’re here to help.
