Recent actions by famous athletes, such as Jimmer Fredette and Jeremy Lin, to protect the market potential of their names were called to my attention by business associates who wanted to know what they could do to protect their name or nickname. The simple answer would be to seek a trademark, as Fredette and Lin have done, but dealing with personal names complicates the issue.
Over the last several years the United States Patent and Trademark Office has developed an attractive, user-friendly website (www.uspto.gov) containing an abundance of information about patents and trademarks.
Utilizing that website, I learned that Fredette filed an application on March 31, 2011, for use of the word "Jimmer" on posters, footwear, apparel and plastic toy figures.
A registered trademark gives the owner the sole right to use the mark (Jimmer, in this case) to indicate the source of goods in the specified categories. A registered service mark provides this same right for services, rather than goods. And when a mark becomes famous, such as Coca-Cola!AE, the owner essentially has the exclusive right to use the mark for all classes of goods and services.
On Feb. 28, 2012, Fredette was informed that the mark "Jimmer" would be registered for the specified goods when he files a statement indicating that he has actually used the mark on such goods in commerce.
Fredette, though, was not so fortunate with respect to an earlier application to register the mark "Fredette." Federal trademark law states that a mark which is primarily a surname cannot be registered on the Principal Register, which provides greater protection than registration on the Supplemental Register.
Once a registration on the Supplemental Register has become "distinctive of the applicant's goods in commerce," however, registration may occur on the Principal Register. This appears to be what occurred with McDonald's restaurants.
Jeremy Lin, in attempting to register the mark "Linsanity" for bags, water bottles, clothing, action figures and sports drinks, has been even less lucky. Two people filed to register the mark "Linsanity" just days before Lin did, and the United States Patent and Trademark Office generally considers registration for a mark on a first-come-first-served basis.
Lin will have an opportunity to respond if the Patent and Trademark Office publishes an intent to register "Linsanity" for either of the two prior applicants. Yet, combining additional letters or words with a surname has the possibility of creating a registerable mark if such a longer word is different enough from the surname alone. This may, indeed, be the case. Lin must hope the decision is otherwise.
However, if he argues that "Linsanity" is primarily a surname and thereby defeats registration for the prior two applicants, he will be in the same situation as Jimmer Fredette and the mark "Fredette."
Many entrepreneurs wish to have their mark be descriptive of their goods or services, but descriptive marks also cannot be registered on the Principal Register. As with Fredette, however, their mark can be registered on the Supplemental Register, and, if the mark subsequently becomes distinctive, it can then be registered on the Principal Register.
But if a mark is understood by the consuming public to be not just descriptive, but to have a meaning which is the same as the goods or services for which the mark is to be used, e.g., cereal, it is considered generic and cannot be registered at all.
Tom Fehr is an Ogden-based attorney with an international practice concentrating on intellectual property and patents. He can be reached at firstname.lastname@example.org.