Just Trademark It: Athletes Turning to Trademarks to Gain Competitive Edge

Just Trademark It: Athletes Turning to Trademarks to Gain Competitive Edge

With the Kawhi Leonard saga officially coming to a close on July 10th after his signing with the Los Angeles Clippers, the city of Toronto, along with the rest of Canada, has been taking the last month to reflect on the past season and what one man meant to the Toronto Raptors, and basketball in this country. Kawhi Leonard will likely be best remembered for what he was able to bring on the court. However, off the court, aside from his distinctive laugh, Leonard brought with him to Toronto a growing appreciation for the importance of trademark registration.

Ever since a dispute regarding the rightful ownership of a logo began in December between Leonard and Nike, a number of his Raptors teammates, conceivably learning from his oversights, have registered trademarks themselves. In March, Fred VanVleet registered a mark for a stylized “FVV” in a triangular shape for use with athletic apparel. Less than a month later, teammate Pascal Siakam filed for trademark protection of the word mark “SPICY P” with the intent to use it on apparel and condiments. On May 4th, the day after Kawhi filed his lawsuit against Nike, Siakam filed to have another trademark protected for a stylized “PS” in a heart shape for use in clothing.

In a previous article, I explained how both Leonard and Nike are claiming ownership of all intellectual property rights in the “Klaw” logo. Although Leonard owns the US trademark for the logo, Nike owns the copyright for the logo. In his lawsuit, Leonard claimed that the logo used by Nike was an “extension and continuation of drawings he had been creating since early in his college career” and that he only allowed Nike to use the logo on certain merchandise. Generally, an original work is automatically protected by copyright the moment it’s created. However, in a countersuit, Nike reportedly claims that the design Kawhi provided and the one created by Nike designers are not the same, nor is Nike’s a derivative work. As a result, Nike maintains the logo is an entirely new and original work wholly owned by Nike, not Leonard. Leonard’s drawing and Nike’s logo can be viewed here.

The recent registrations by Raptors players not only illustrate the importance of legally protecting original works (e.g. trademark registration, copyright), but also a growing trend whereby athletes are increasingly using trademarks as a means of distinguishing themselves from other athletes and growing their personal brands. Athletes are recognizing that it is better to develop and own their own intellectual property rights than it is to allow a company the right to create with their name. For today’s modern athlete, their individual brand marketing may arguably be just as, if not more, important to their ability to earn endorsements as their play on the field.

Here are several ways athletes have used trademarks to their benefit in the past.

1. In anticipation of securing lucrative endorsements.

A registered mark allows athletes to easily negotiate licenses and endorsement deals by providing potential partners with an accessible path into the athlete’s IP portfolio. In 2015, during his rookie season with the Calgary Flames, Johnny Gaudreau’s agency sought trademark protection for the mark “Johnny Hockey”. Gaudreau’s agent at the time said the agency “felt that Johnny was going to be a special player and if he takes off the way we felt he could, he has the potential to have endorsement opportunities that could be very valuable.” Likewise, former NFL quarterback Johnny Manziel, aka “Johnny Football”, attempted to have the mark “The house that Johnny built” protected back in 2014. However, Manziel’s stint in the NFL was short-lived, and the mark was never put into use, leading to its abandonment in 2018. 

2. As a way of growing their own brand.

Recall at the Super Bowl media day in 2015, NFL running back Marshawn Lynch answered every question with some variation of “I’m just here so I won’t get fined.” Amidst a flurry of social media attention following the affair, Lynch filed to have the catchphrase protected with the US Patent and Trademark Office (USPTO). Months later, Lynch’s official clothing brand, Beast Mode, was selling T-shirts featuring the phrase. Lynch’s persistence at the USPTO not only aided him in establishing his Beast Mode brand but it may have also led to his numerous other endorsement deals with brands like Pepsi, Xbox, and Skittles.

3. To add value to a pre-existing endorsement.

Tiger Woods’ iconic “TW” logo, often seen on Nike apparel, is a design mark owned by ETW Corporation, the licensing agent for Tiger Woods, not Nike. The logo gained protection in 2000, four years after Tiger originally signed with Nike and two years before Tiger started using the logo during tournament play. The partnership between Nike and Tiger is one of the most iconic and mutually-beneficial partnerships in all of sport, generating hundreds of millions of dollars for Tiger and helping elevate Nike into a premier golf brand.

4. To control the way a mark is used.

In 2011, former NFL quarterback Tim Tebow caught media attention for his unique form of prayer and reflection, which became known as “Tebowing”. Tebowing quickly emerged as a pop-culture phenomenon, leading Tebow’s representatives to have the word “Tebowing” protected with the USPTO. For Tebow, trademarking was less about commercial use of the mark and more about controlling the way it was used. Tebow, a devout Christian, said his reasons for protecting the mark were “to just control how it’s used, make sure it’s used in the right way.” Ultimately, the mark was never put to use and was abandoned soon after registration.

Generally, trademark law serves the public interest by protecting both the manufacturers who have built up goodwill in a mark and the consumers against dishonest or misleading trade practices that could confuse or deceive them. However, athletes increasingly recognize trademark law as a means of differentiating themselves from the competition, allowing the athlete to increase the marketability of their brand and those with whom they are, or may become, associated. Unsurprisingly, with the value of endorsement contracts steadily rising, and the new amendments to Canada’s Trademarks Act, specifically the ability to allow anyone to register a trademark regardless of whether they intend to use the trademark or not, this is likely a trend that we will continue to see far into the future.

Written by Alexandre Dumais, IPilogue Editor and JD Candidate at Osgoode Hall Law School. Alexandre is also the Director of Sports, Osgoode Entertainment and Sports Law Association.