Trademark Abandonment: When Enforcement Conflicts With Other Obligations

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Trademark Abandonment: When Enforcement Conflicts With Other Obligations

Texas A&M quarterback Johnny Manziel won the Heisman Trophy last year as a freshman, and is widely considered one of the best football players in the country. His nickname, Johnny Football is very popular in College Station, Texas. Fans of the Aggies are clamoring for t-shirts that read Johnny Football. But, the freshman phenom is forbidden by NCAA rules from profiting. If Johnny Football were to set up a t-shirt company and start selling apparel, he would lose his scholarship, under NCAA regulations. But, if he were to allow others to make Johnny Football t-shirts, and fail to stop them, he could lose the trademark forever.

This paradox was solved by forming a corporation, JMAN2 Enterprises. JMAN2 has registered the trademarks of “Johnny Football” and “Johnny Manziel”. JMAN2 has begun sending cease and desist letters to any entrepreneurs marketing his name or likeness, and even filing suit against those who do not. This is an awkward combination of policing others from using a mark, and yet not using it themselves. Johnny Football may inspire a roar of the crowd inside Kyle Field, but in the metaphorical marketplace, the name inspires a deafening silence.

This is the awkward truce between the NCAA rules and trademark law. The NCAA does not wish its schools to engage in a bidding war over top players, but rather insists upon a spirit of amateurism. To this end, they’ve set up a byzantine system of regulations to ensure schools do not allow their players to profit while playing.

Trademark law, however, does not distinguish between amateurs and professionals. The law will not take pity on a intellectual property holder who abandons their trademark in favor of a college scholarship. If the trademark holder does not police their mark, then a court will find it to have been abandoned. A finding of abandonment implies that the mark is in the public domain and the owner no longer has any rights to the mark. If the mark was abandoned through non-use a subsequent user may claim it after three years when the likelihood of confusion is lessened. §1127 of the Lanham Act states clearly that three years of non-use will be the principle evidence of abandonment.  The trademark of Johnny Football would like have belonged to Johnny Manziel as soon as he became famous and t-shirts were printed up. This is true regardless of federal registration.

The NFL will not let him enter until after next season due to their draft policies. So, if Johnny Football wishes to play football in America, he will have to do so under the NCAA regulations for at least one more year. Counting last season, that will make two years for which he has not used his trademark. If he wishes to forego the NFL draft and play for his junior and/or senior years, a common enough occurrence among elite players, he will have exceeded the three years of non-use as required by the Lanham Act for a finding of abandonment. Therefore, the only option, for the player who knows how to run an option, is to thoroughly police his trademark while not profiting off of it. The silence in the marketplace is the only outcome for the two incompatible worlds of superstar athlete and college student.

Although, it is also worthy of note that Johnny Manziel is allowed under NCAA regulations to keep any awards from lawsuits which he would settle or win. This is because lawsuits are not profits. They remedies from a lawsuit are there to make the plaintiff whole, and to recoup losses. Cynics, however, have wondered if this will encourage a school’s boosters to intentionally infringe upon a player’s trademarks, then settle the resulting law suit for hundreds of thousands of dollars, as an end run around the NCAA regulations. The NCAA has said colluding to do so would be a violation, but has yet to define what evidence of collusion would be necessary. Nonetheless, we can look for the uneasy truce between NCAA regulations and intellectual property law to get far more complex in the coming decade.