ROUGHING THE APPLICANT: USPTO REFUSES TOM BRADY’S TOM TERRIFIC TRADEMARK APPLICATIONS
The US Patent and Trademark Office (USPTO) has refused registration of New England Patriots quarterback Tom Brady’s applications for TOM TERRIFIC in Classes 16 and 25.
BACKGROUND
Brady’s company, TEB Capital Management, filed the TOM TERRIFIC applications for “collectible trading cards; sports trading cards; posters; printed photographs” in Class 16 and “t-shirts; shirts” in Class 25 based on intent-to-use. Although the mark was not yet in use, news of the filing quickly spread and drew the ire of professional sports fans, in particular, New York Mets fans, because of the longstanding association of the nickname with former Mets pitcher, Tom Seaver.
During his 12 seasons with the Mets, Seaver led the team to their first World Series championship in 1969, won three Cy Young Awards and appeared in numerous Major League Baseball (MLB) All-Star Games, and also remains the franchise’s all-time leader in wins. His outstanding play on the baseball diamond earned him the nickname ‘Tom Terrific’ and he continued to set records even after his retirement, including the then-highest percentage of votes of 98.84% for election to the MLB Hall of Fame on 7 January 1992.
Although Tom Seaver has not thrown a pitch in an MLB game since 1986, the ‘Tom Terrific’ moniker has followed him throughout his retirement among fans and the media alike, resulting in the public backlash against Brady’s applications. The outrage was only exacerbated by the timing of the filing, given that the Seaver family announced his retirement from public life due to his recent diagnosis with dementia a short time before Brady’s applications were filed.
Although Seaver never filed a trademark application for the nickname, companies have capitalised on the ‘Tom Terrific’ moniker, including the release of trading cards to coincide with his election to the Hall of Fame. Such activity also supports fans’ and sportswriters’ contentions that the TOM TERRIFIC mark has been associated with Tom Seaver for over 50 years and the mark is not widely associated with the Patriots quarterback.
Brady’s recent statements not only lend credence to these claims, but indicate that he does not possess a bona fide intention to use the mark, which an applicant must verify at the time an application is filed with the USPTO. Instead, he stated that his intention was to disassociate from the nickname since he did not like it and, therefore, wanted to “make sure no one used it because some people wanted to use it”.
USPTO DECISION
The USPTO issued office actions in which both applications were refused registration based on two provisions of the Lanham Act – namely:
• false suggestion of connection with persons under Section 2(a); and
• lack of consent to register the mark from the living individual who is identified by the nickname under Section 2(c).
Moreover, the examining attorney stated that, “although Tom Seaver is not connected with the goods provided by applicant under the application, Tom Seaver is so well known that consumers would presume a connection”.The examining attorney further concluded that the TOM TERRIFIC mark is so “uniquely and unmistakably” associated with Seaver that “a connection between [Seaver] and the applied-for goods would be presumed” by consumers.
COMMENT
As the office actions are “non-final”, TEB Capital Management has the opportunity to submit arguments against the refusal by 24 February 2020. Such arguments would need to include substantial evidence of the association of the TOM TERRIFIC mark with Brady on a national scale. However, Brady recently noted that the experience was a “good lesson learned” and that he would “try to do things a little different in the future”, which may indicate that the company does not intend to pursue the applications further and will remove TOM TERRIFIC from its IP playbook.
The article was originally published on September 18, 2019 in the World Trademark Review(WTR).