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What’s in a name? Registration obtained for “Johnny Hockey”

Posted in Branding, Mixed Bag of Nuts, Trademarks, USPTO

Applying for a federal trademark registration for a name or nickname can be tricky business.  For example, the registration of a mark is prohibited if it is “primarily merely a surname,” meaning that the primary significance of the mark to the public is a surname (such as “Johnson”), unless there is a showing of acquired distinctiveness. See TMEP §§ 1211, 1211.01-.02.  By contrast, registration of marks that identify a particular person (without a surname being the primary significance), such as a nickname or signature, is less restricted.  However, such a registration cannot be obtained by third parties without permission–the identified person must consent to the registration.  See TMEP §§ 813, 1206; Lanham Act § 2(c).  Such consent is required even if the applied-for mark does not clearly use a person’s full name–rather, consent is required “if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used,” which can extend to first names, shortened names, stage names, nicknames, pseudonyms, and even initials.  See TMEP § 1206.01.

For example, in the case In re Sauer,27 USPQ2d 1073 (TTAB 1993), the Board held that registration of a mark BO BALL, used for a sports ball, was barred under Lanham Act § 2(c) without consent to register, because BO is a name that would be associated with the well-known professional athlete Bo Jackson.  As another example, in the case In re Hoefflin, 97 USPQ2d 1174 (TTAB 2010), the Board held that the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT were barred under Section 2(c) without consent to register, because they created a direct association with President Barack Obama.

Last year, the professional hockey player Johnny Gaudreau, who plays for the NHL’s Calgary Flames, obtained a trademark registration for his nickname “Johnny Hockey.”  This trademark registration (Reg. No. 4992448) protects the standard character mark “JOHNNY HOCKEY” for various goods in International Class 25, including several types of clothing, footwear, and headgear.  The application sailed safely to registration without any obstacles, as Johnny Gaudreau provided his consent.  The consent was clearly indicated as required by TMEP § 813, through a statement in the application and a consent agreement that was made of record.

At only age 23, the rising NHL star Johnny Gaudreau made a great business move by obtaining a trademark registration for his well-known nickname–by doing so early, he stands to gain significant revenue throughout his hopefully long career through, for example, clothing lines bearing that mark and lucrative endorsement deals with sponsors to license that mark for merchandise. This type of trademark registration is relatively common among professional sports athletes and celebrities–another recent example is NFL player Johnny Manziel, who filed a trademark application for “Johnny Football.”  Although that application (Serial No. 85839336) hasn’t reached registration yet, Manziel was able to leverage the application alone to negotiate a higher percentage of royalties on sales of gear bearing that nickname.