United States: Is Trademarking An Athlete’s Name Before A Big Game A Distraction Or Good Karma?

Is it a smart move or premature for a well-known athlete to trademark his name weeks before he actually may (or may not) make the history? When tennis star Maria Sharapova came up with the name "Sugarpova" for her candy business, many thought her trademarking move was cute, original and well-timed. When the 49ers' Colin Kaepernick filed to trademark his name earlier on this month, some, including this blog's author, thought such a move may be a little premature.  Mr. Kaepernick got a priority filing date and may have beaten others to the punch.  But the move could prove distracting. Mr. Kaepernick, please prove us wrong this Sunday.

Arguably the biggest sporting event of February, the Super Bowl, is less than a week away. A quarterback's (QB) preparedness and concentration for the big game and some luck during the game may be a key for the team's success. 

That makes questionable a decision of San Francisco's QB, Colin Kaepernick, to trademark his name and move within a couple of weeks from the Super Bowl. Colin Kaepernick filed for the trademark "Kaepernicking" which game fans understand as his tattooed bicep-flexing (or kissing?) act after the touchdown that has swept during his team's post-season run.

The U.S. Patent and Trademark Office's website shows several trademark applications in Mr. Kaepernick's name filed on January 14, 2013. Mr. Kaepernick seeks to register the term KAEPERNICKING based on actual use of this mark. Mr. Kaepernick also intends to use his full name COLIN KAEPERNICK and variations of his name KAEPERNICK SK7, KAP, KAP7 on clothing, specifically T-shirts, footwear and headgear. According to some media reports, Mr. Kaepernick's marketing team already has authorized a few small T-shirt companies to use his name and image on their products.  The official "KAEPERNICKING" shirt is made by one company (Sportiqe). Some proceeds from that shirt are said to go to an organization that organizes and runs camps for children with congenital heart defects. Mr. Kaepernick apparently has been involved with the camp. (Mr. Kaepernick's adoptive parents lost two children to heart complications.)

There is no question, football players, like other sporting stars, particularly in individual sports, should be able to profit from their popularity. However, some question the timing of Mr. Kaepernick's trademarking move. Shouldn't the person on whom his entire team will depend be focused exclusively on the big game that comes on February 3?

Granted, Mr. Kaepernick probably did not take much time to review issues in connection with the filing of his trademark applications. Nevertheless, media quickly picked up on this subject. (I first learned about Mr. Kaepernick's trademark applications on CNN radio.) Might the trademarking move become a distraction for him? 

If the 49rs win, obviously it will not be a problem. As they say, victors are not judged. In fact, Mr. Kaepernick's trademark move would make perfect sense, as his popularity almost certainly will soar.  Mr. Kaepernick should be entitled to capitalize on his victory and fame. But what happens if Mr. Kaepernick performs badly in the Super Bowl and his team losses, despite being the favorites?  Will his trademark move add fuel to the criticism? Most probably. 

Among other unfortunate trademark moves seen on the Trademark Register, PERFECT SEASON trademark filed in 2007 springs to mind. The "perfect season" ended infamously for the New England Patriots when they lost to NY Giants in the Super Bowl. It is interesting to compare Mr. Kaepernick's timing to the timing of trademarking by athletes in other sports. 

Take Maria Sharapova as an example of good timing. Russian, or rather, international, tennis star Maria Sharapova filed to register her trademark SUGARPOVA for candy in May 2011.  That was almost seven years after she famously won her Wimbledon title by beating great Serena Williams. In May 2011, Ms. Sharapova already won three Grand Slams, more than any Russian women. Maria also was (and apparently still is) the highest paid female athlete in the history if you account for commercial endorsements and sponsorships in addition to prize money. 

As far as her tennis career, at the time of trademarking, Maria was recovering from a shoulder injury. Her ranking slipped and few expected her to win another Grand Slam. Surprisingly, in several months Maria miraculously came back to make a final of Australian Open in January 2012 and then, within about one year from her trademarking move, she won a Roland Garros tournament to complete her Career Grand Slam. A "Career Grand Slam" is when a tennis player wins all four Grand Slam tournaments on different surfaces, Wimbledon, US Open, Australian Open and French Open (aka Rolland Garros), not necessarily in the same calendar year. Was it a coincidence or did trademarking somehow help Maria?

The sugarpova.com website states "a portion of every purchase [of Sugarpova candy] is given to the Maria Sharapova Foundation for helping children across the world achieve their dreams." Is that possible that combining a business venture built on Maria's famous name and good cause helping underprivileged children brought a good karma on her? Starting Sugarpova business coincided with Maria's new chapter in her tennis career. If good karma helped Maria's sports career, perhaps Mr. Kaepernick's starting his business venture, a portion of proceeds from which goes to a charitable cause, will also bring good karma to Mr. Kaepernick and 49ers?  What do you think?  We'll see in a few days.

* This piece is not intended to be a sport or legal review. This posting does not represent the views of the author's employing law firm or his fellow Sports Law Blog contributors.

This article is for general information and does not include full legal analysis of the matters presented. It should not be construed or relied upon as legal advice or legal opinion on any specific facts or circumstances. The description of the results of any specific case or transaction contained herein does not mean or suggest that similar results can or could be obtained in any other matter. Each legal matter should be considered to be unique and subject to varying results. The invitation to contact the authors or attorneys in our firm is not a solicitation to provide professional services and should not be construed as a statement as to any availability to perform legal services in any jurisdiction in which such attorney is not permitted to practice.

Duane Morris LLP, a full-service law firm with more than 700 attorneys in 24 offices in the United States and internationally, offers innovative solutions to the legal and business challenges presented by today's evolving global markets. Duane Morris LLP, a full-service law firm with more than 700 attorneys in 24 offices in the United States and internationally, offers innovative solutions to the legal and business challenges presented by today's evolving global markets. The Duane Morris Institute provides training workshops for HR professionals, in-house counsel, benefits administrators and senior managers.

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