Tom Brady (Photo by Andrew Burton/Getty Images)
The former New England Patriots and current Tampa Bay Buccaneers quarterback, Tom Brady, has filed a couple of trademark applications with the United States Patent and Trademark Office that are generating quite a bit of buzz. Brady has filed to register the marks “TOMPA BAY” and “TAMPA BRADY” with the stated intention for use with the sale of clothing, headwear, and footwear.
Brady filed the applications under his corporate entity, TEB CAPITAL MANAGEMENT, INC., which has successfully applied for and registered numerous “TB12” trademarks that cover commercial use for everything from dried fruit and nut-based energy food bars to bedsheets. He also previously failed miserably in an attempt to register the mark “TOM TERRIFIC” for use with apparel, trading cards, and posters.
Brady said that he regretted filing to register the “TOM TERRIFIC” mark after many people expressed anger that the name instead belongs to Hall of Fame pitcher Tom Seaver. He also admitted that it was a “good lesson learned” and that he would “try to do things a little different in the future.”
Filing trademark applications to register “TOMPA BAY” and “TAMPA BRADY” is Brady’s first attempt to do things a little differently with regard to boosting his intellectual property portfolio. Has he learned from his mistakes of the past?
When Brady filed to register “TOM TERRIFIC” he did so only in an attempt to prevent others from using it. In fact, he indicated that he did not like the nickname and did not truly have an intent to use it in commerce. Thus, Brady tacitly acknowledged that he filed the trademark applications for an improper purpose.
An applicant must demonstrate a bona fide use of a mark in commerce for a trademark application to progress from pending status to becoming registered. While an applicant has the right to file an intent-to-use application with the United States Patent and Trademark Office, the application means little to nothing if it never becomes registered, and it cannot be registered unless the applicant eventually offers a statement of use that demonstrates the applied for mark being used in commerce in connection with the goods or services listed in the application.
While Brady apparently never intended to actually use “TOM TERRIFIC” in commerce, he seems to be genuinely interested in receiving registrations for “TOMPA BAY” and “TAMPA BRADY,” even joking with New Orleans Saints quarterback Drew Brees that he never understood why Brees was not making Drew Orleans shirts. This time, people are not taking issue that Brady is palming off another person’s notoriety, as was the case with “TOM TERRIFIC,” but Brady is still the butt of many jokes surrounding the filings.
Gotham Sports Network associate editor Brett Herskowitz tweeted, “Anyone who wears a ‘Tompa Bay’ shirt deserves to be shunned from society.”
Jokes aside, Brady has a strong likelihood of succeeding on registering his two new filings. That is true even though The Dan Patrick Show had been selling “TOMPA BAY” T-shirts on its official website prior to Brady’s filings and despite two individuals applying to register the mark “TOMPA BAY” before Brady submitted his paperwork with the United States Patent and Trademark Office.
On March 18, an Arizona man named Todd Borowsky filed an intent-to-use trademark application to register “TOMPA BAY” for use with athletic apparel. On March 31, a Florida man named Vincent Scotti also filed to register the mark with intended use in conjunction with the sale of hats and shirts. Each application, while it remains pending, could stall Brady’s filing from proceeding. The examining attorney who is eventually assigned to Brady’s “TOMPA BAY” filing could issue a Suspension Notice that would stall the filing while Borowsky’s and Scotti’s applications are reviewed. However, neither Borowsky’s nor Scotti’s application has any real chance of success.
An example of why neither Borowsky nor Scotti should succeed comes by way of NBA veteran Jeremy Lin, who was affiliated with the term “LINSANITY.” Another individual jumped the gun and tried to register “LINSANITY” for use with eyeglasses and lenses. The examining attorney at the United States Patent and Trademark Office rejected his application for the same reasons that examining attorneys, once they are assigned to the applications filed by Borowsky and Scotti, will likely discard the previously filed “TOMPA BAY” applications.
With “LINSANITY,” the examining attorney refused registration because the mark included a name of a particular living individual (Jeremy Lin) whose written consent to register the mark was not of record and because the mark falsely suggested a connection with Lin.
“[T]he term LINSANITY points uniquely and unmistakably to Jeremy Lin and the phenomenon surrounding his accomplishments,” stated the examining attorney’s Office Action. “Therefore, goods bearing the term LINSANITY will be associated with Jeremy Lin because he is so well-known that the public would assume a connection.”
It would be very surprising if Borowsky and Scotti do not receive similar Office Actions, rejecting their applications because of a false connection and a lack of Brady’s consent to register the mark. Brady is more well known to the general public than Lin and “TOMPA BAY” is unmistakingly connected to Brady. There is no prior pending application for “TAMPA BRADY,” and thus Brady should have no issue receiving a registration for that mark once the application progresses and a statement of use is submitted.
Similarly, Dan Patrick’s use of the mark in commerce should not lead an examining attorney to refuse Brady’s “TOMPA BAY” filing based on a likelihood of confusion with Patrick’s sale of apparel. This would be true for the same reasons set forth above. Patrick could be alleged to have been using a mark that is so connected to Brady that Brady’s consent is required. Further, there is arguably a false connection being made.
That said, hopefully Brady did learn some good lessons from the “TOM TERRIFIC” filing and makes the choose to not be a trademark bully with Patrick.
Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at heitner@gmail.com and follow him on Twitter at @DarrenHeitner.