-Wes Anderson, Attorney

Celebrity has its advantages in the trademark world. Slogans and taglines are big business for famous athletes, which in turn has led to some entertaining trademark applications: JOHNNY FOOTBALL and LINSANITY, to name a couple. As Martha noted in 2012, Anthony Davis sought to capitalize on his distinctive appearance and “The Brow” nickname with four trademark applications: FEAR THE BROW, RAISE THE BROW, BROW DOWN, and AD23. Each application originally identified a litany of goods and services, including “book covers,” “bowls,” “facial tissue,” and — of course — “participation in basketball.”

Trademark rights in the United States rely upon use — and a federal trademark registration requires proof of use, or a “specimen,” for each class of goods or services listed in an application. A specimen “must show the mark as used on or in connection with the goods in commerce.” So it’s not surprising that, three years later, Davis has obtained registrations for all four marks — but only in connection with apparel items, including t-shirts. The remaining goods and services were divided from the now-registered mark, and remain pending at the U.S. Patent and Trademark Office. Davis filed his latest requests for extensions of time to prove use of each mark just last week.

In order to obtain these registrations, Davis submitted specimens for each mark (here’s FEAR THE BROW’s specimen) that purport to show photographs of t-shirts bearing each slogan/mark. Along with the photographs, Davis submitted what appear to be website screenshots from Nike’s online store. Notice anything?


I don’t want to incur the wrath of The Brow, but as they say in those hip internet circles, “this looks shopped.” These do not appear to be photographs of actual t-shirts but, instead, renderings of text placed on the sleeve of a generic, blue shirt. And despite the impression conveyed by the website screenshot, as of this writing there are no listings for any of the registered marks on Nike.com.  As far as I can tell, you cannot purchase your very own FEAR THE BROW sleeve t-shirt today.  It doesn’t appear, then, that Davis is actually using these marks in commerce — or, at least not online and among the general public.

This may expose Mr. Davis to some problems down the line, particularly with zealous infringers. Fabrication of a “fraudulent specimen” is grounds for cancellation of the registrations, but the bar is quite high — a party alleging fraud must provide clear and convincing evidence, and must show that the errors in the specimens were more than simply an “honest misunderstanding.”

With all that said, there’s actually a certain genius to these specimens. By placing each slogan on the sleeve and breast pocket, Davis avoided a common pitfall for t-shirt specimens: if Davis had instead placed the slogan on the front and center of the shirt, the trademark office would have almost certainly rejected the specimen as an “ornamental” use of the slogan that does not function as a trademark.  As they say (or, as they should say), a catchy slogan does not a trademark make. According to the USPTO:

A small, neat, and discrete wording/design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods.

When registering a trademark for apparel, brand owners should keep in mind that the trademark needs to indicate source, and simply “appearing” on the shirt is not enough.  And while the PTO will often rubber-stamp certain trademark specimens, it’s important to ensure that the specimens faithfully depict of the mark as it is actually used among the relevant consumers.  In an infringement case, a savvy opposing party won’t simply take a registration certificate for its word — they will go through the filing history with a fine-toothed comb.  In the meantime, it remains to be seen whether infringers will ultimately FEAR THE BROW.