What is the difference between kissing your bicep when scoring
a touchdown and creating the shape of an 'M' above your
head having won a race?
The answer is none in terms of gestures to celebrate success but
unfortunately for Mo there are very significant differences if you
are looking to protect and manage your personal brand.
In the US where the concept of sport and celebrity branding is
commonplace, the San Francisco 49er's quarterback Colin
Kaepernick has just filed 7 trade marks for variants of his name.
One of these is for the name Kaepernicking which refers to act of
kissing his bicep having scored a touchdown. This has been applied
for clothing, clearly in order to sell as many t-shirts as
possible. Keapernick follows in the wake of other American
footballers such as Tim Tebow who has a trade mark of him in his
Why mention the Mobot in relation to this? Well, the fact of the
matter is that 'mobot' has now entered the dictionary and
as such has become generic and therefore not protectable through a
trade mark or any other IP rights. Clearly this is a missed
opportunity from a branding perspective and demonstrates the
difference between the UK and US and their approach to the
commercialisation of athletes and personalities.
In the UK, celebrity linked trade marks suffer from a potential
'badge of origin' test (i.e. there is a belief that the
goods or services do not actually come from the celebrity
concerned), whilst in both countries trade marks suffer from the
weakness of the mere endorsement concept where a name is simply
placed on the goods themselves. This is often perceived as a very
weak trade mark which will not actually protect the personal -
interestingly, the Kaeperninking trade mark is shown as a mere name
on a t-shirt.
Where trade marks suffer from these limitations, Guernsey Image
Rights can fill the gaps. In the case of Kaepernick, he could
register himself and then register all the associated imagery and
poses associated with himself. This way he can not only protect his
name and the seemingly endless variants, but can also protect the
imagery surrounding himself - which undoubtably is the most
valuable of all. Which brings us back to the Mobot and the missed
chance of protecting and exploiting an instantly recognisable
image. If only someone had considered the branding opportunities
and advised Mo to formally protect the Mobot. We should all take
the US as an example and make forward provision to protect and
manage such valuable pieces of IP.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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As reported in the market updates section of this newsletter, the UAE Ministry of Economy recently reviewed the fees charged by its various departments, including the Trade Mark, Patent and Copyright Office.
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