Recently, while investigating Zlatan Ibrahimović’s recent transfer from Barca to AC Milan, I ran across this interesting note on his wikipedia page: “The name Zlatan was trademarked in May 2003 by PRV for “most likely being perceived as Zlatan Ibrahimović”, which meant that he received exclusive rights to the name for certain products, including sporting goods, clothing, and shoes.” So it appears, that Ibrahimovic has trademarked his first name in Sweden. I then began to wonder about what trademarks other athletes may own related to their names and associated entities. What follows is a short survey of trademarks owned by the Top 10 athletes in Sports Illustrated’s 2010 Fortunate 50. (Note: the majority of my research was performed using the U.S. PTO’s trademark search service Trademark Electronic Search System. Where athletes (or companies) had at some point registered a mark, I attempted to correspond with the attorneys of record, and some of the information contained herein came from those sources.)
1. Tiger Woods: 17 marks
Unsurprisingly, Tiger tops the list of highest earning U.S. athletes. Also, it should come as no surprise that Tiger, actually his corporation based in Switzerland, owns an abundance of marks related to his name and the TW symbol. Tiger has always maintained a tight control on his image, marketing, use of his likeness, etc., which is logical because of the high value of his endorsement and how many items bear his trademark. Tiger’s trademarks are for items varying from golf course construction to watches, to the Tiger Woods Foundation (see discussion below), to my personal favorite computer games software featuring golf.
2. Phil Mickelson: 1 mark
Second on the list is Tiger’s frequent rival, Phil Mickelson. In the trademark race, though, Phil’s one active registered trademark is no rival at all. Unlike Tiger, whose marks run the gamut from symbols to word marks, Mickelson’s service mark covers only the word mark, “Phil Mickelson.”
3. Floyd Mayweather Jr.: 1 mark
At the outset it should be noted that Mayweather’s third ranking is related more to his 2010 participation in two big fights (versus Sugar Shane Mosley and Juan Miguel Marquez) than to his popularity in promoting products or entrepreneurial enterprises, which is in contrast to others in the top ten. Mayweather’s one and only trademark is related to his foundation the Floyd Mayweather, Jr. Foundation. Obtaining a mark for use by a foundation is an intelligent strategy for professional athletes. The right to enforce the mark against an infringer is very valuable to the athlete and to their foundation due to the risk of bad publicity that could result from infringement.
This is likely related to the fact that athletes themselves have protection over their likeness through the Right of Publicity, but their foundations have no such protections. For example, if a third party began soliciting donations under the banner of the Tiger Woods Foundation, the real Tiger Woods Foundation’s reputation and public image might be at risk. Foundations and non-profit organizations are likely more sensitive to negative publicity than are for-profit corporations. Furthermore, the foundation, as previously stated, has no method of remedy under the right of publicity.
4. LeBron James: Zero marks
James holding no mark on his name is the most surprising fact I came across in my research. The name LeBron is very valuable and quite distinct. James applied for a trademark in 2003 for use on clothing and apparel, but the mark was abandoned in 2004. Interestingly, the mark was assigned an examiner in April of 2003-before he graduated from St. Vincent-St. Mary’s High School and three months before the Cleveland Cavaliers of the NBA drafted him. Maybe, he didn’t know what he should do about his trademarks.
As an aside, American City Furniture in Cleveland, Ohio owns the mark “Home Court by LeBron James,” which is a furniture collection for kids designed by James. The fact that James’s likenesses are on everything from shoes to furniture, shows the great diversity of applications of an athlete’s marks.
5. Alex Rodriguez: Zero marks
Rodriguez’s lack of trademark ownership may have something to do with the fact that his name is more common than say Tiger Woods or Kobe Bryant. For instance, there may be other persons named Alex Rodriguez in the United States who can claim a right to use that name in a business under 15 U.S.C. § 1051(a)(3)(D).
6. Shaquille O’Neal: 2 marks
O’Neal’s name is used in two actively registered marks owned by Mine O’ Mine, Inc. Corporation of Nevada who owns the rights to publicity and intellectual property of O’Neal. Both marks protect “Shaquille O’Neal All Star Comedy Jam” one for digital media use and the other for live comedy entertainment purposes. Mine O’ Mine has litigated the use of O’Neal’s likeness before in an interesting 2010 case revolving around the term “The Big Shaqtus,” indicating an active management of O’Neal’s intellectual property. Despite this, the marks covering O’Neal’s signature and “Shaquille O’Neal” were abandoned in 1997 and 2008, respectively.
7. Kobe Bryant: Zero marks
There are no active marks on Kobe Bryant’s name. A mark on “Kobe Bryant” owned by Kobe Family Entertainment, Inc. was abandoned in 2001. Kobe’s name is distinctive and valuable, so it is surprising that there are no registered active marks on his name.
8. Derek Jeter: Zero marks
Similar to his fellow Yankee infielder A-Rod, the Yankee captain’s moniker or likeness have not been registered with the USPTO.
9. Peyton Manning: 1 mark
Manning, through his non-profit Peyton Manning Charitable Foundation, holds the active mark on “Peyton Manning’s Peyback Foundation to Benefit Children.” A definite trend in the research is mark ownership on behalf of athlete’s foundations.
10. Dwyane Wade: Zero marks
Wade, James’s backcourt mate and part two of the Miami Heat triumvirate, is another athlete that has never been in contact with the USPTO. A search of USPTO.GOV’s Trademark Electronic Search System (TESS) for “Dwyane Wade” returns no results.
Nike: 5000 marks globally; more than 200 marks in the U.S.
As a way to round out my research on trademarks related to sports, I inquired the IP department at Nike regarding their number of patents. It is no surprise they own a lot of marks; more than 200 in the United States alone, and 5000 around the world. This astronomical number of marks should not be surprising though since Nike, unlike the athletes discussed infra, exist only to market products. A quick survey of marks on TESS shows a variety of marks ranging from the common “Nike” and “Nike Pro Combat” that I am familiar with, to more unusual marks like “Nike Aerographics” and “Nike+ Fuelband.”
In summary, my overall impression is that generally professional athletes have chosen not to protect names and likenesses through the use of trademarks. It is surprising that five of the top ten earning professional athletes of 2010 own no marks on their names, and further, nine of the top ten have two marks or fewer. Some of this is likely due to protections afforded by the rights of publicity, but despite those protections, registering a trademark would offer a relatively painless way to provide extra protection to the names and likenesses of these professional athletes.
Tiger Woods is an outlier with respect to his decision to obtain trademarks on his name. As mentioned above, however, this should not be surprising considering how closely his public image has always been maintained (hence the major scandal resulting from his mistakes of 2009).
Lastly, it appears that when athletes have chosen to pursue the extra protection of a mark, they have done so to secure a mark on the names of their foundations. Logically, an athlete should seek to protect the name of his non-profit foundation because non-profits are especially susceptible to changes in public opinion. An athlete looking to ensure that his foundation has the ability to pursue enforcement on infringement makes an intelligent decision by registering its mark with the Patent and Trademark Office.
*Joseph Norman is a second-year law student at Wake Forest University School of Law. He holds a Bachelor of Science in Management from North Carolina State University and an MBA in Finance from the McColl School of Business at Queens University of Charlotte. Prior to enrolling in law school, Mr. Norman worked for Wells Fargo Wealth Management in Equity Research. Upon graduation in May 2012, Mr. Norman intends to practice corporate law.