-Wes Anderson, Attorney
In the fall of 2012, an upstart freshman quarterback at Texas A&M named Johnny Manziel earned the moniker “Johnny Football” during an incredible season, leading the Aggies to a number of huge wins. Yet after three years, a Heisman Trophy, and a shaky rookie season in the NFL, Manziel has yet to secure a trademark registration for JOHNNY FOOTBALL. It’s a lesson for anyone who begins widespread use of a trademark: get an application filed ASAP.
A recent ESPN article discussed Manziel’s progress leading up to his sophomore year in pro football. Manziel laments his role as a “distraction” on the Cleveland Browns in 2014 and says he will no longer do his “money sign” gesture on the field. It also contained this intriguing note:
A company called Already LLC, headquartered in Fort Worth, Texas, recently transferred trademarks it owns — Johnny Baseball, Johnny Basketball, Johnny Sports, Johnny Golf and Johnny Soccer — to Manziel. Manziel is still in the process of securing Johnny Football.
This seemed hard to believe, at first. Even Wikipedia claims that the JOHNNY FOOTBALL nickname “is a registered trademark.” But for perhaps the first time in history, Wikipedia has this one wrong.
Manziel, filing jointly with an entity named “JMAN2 Enterprises, LLC,” applied to register the JOHNNY FOOTBALL trademark for a variety of apparel and entertainment services on February 2, 2013. The problem? An individual named Shannan Young had already applied to register the mark JUANITO FÚTBOL one month earlier on January 3, 2013. “Juanito,” of course, is the Spanish “diminutive” for Juan, which is roughly equivalent to “John” for an English-language name. In essence, Young beat Johnny Football to the PTO register for JOHNNY FOOTBALL.
The real kicker (no pun intended) is that old college rivalries appear to be behind the application. Take a look at Young’s specimen for the JUANITO FÚTBOL mark. Notice anything?
That’s a logo for Texas Tech University on the product wrapped in the trademark. Texas Tech, of course, is an in-state (and former conference) rival of Texas A&M, Manziel’s alma mater. Also, it is unexplained why this was an acceptable specimen of use — the application identified “Hats; Jerseys; Sweatshirts; T-shirts” and the product shown appears to be some kind of cup. But the juanitofutbol.com site remains live and active, and continues to sell apparel products bearing the mark.
We recently noted the importance of policing use of trademarks and watching for potentially-infringing marks. The ongoing saga of Johnny Manziel emphasizes the importance of filing for trademark applications as soon as they are in widespread use — before a foe can swoop in and block registration of your mark.
As a result of Young’s quick actions, Manziel’s application was eventually suspended for nearly two years while Young’s senior application moved through to registration. Manziel’s application finally received an office action in January 2015 citing JUANITO FÚTBOL as grounds to refuse registration.
It appears that, eventually, Manziel was able to acquire Young’s registration – an assignment from Young to Manziel’s JMAN2 Enterprises entity was recorded earlier this month (though it appears to have actually taken place in April 2014). An office action response should make quick work to point this out and, finally, allow JOHNNY FOOTBALL to proceed to registration. But, perhaps, Manziel could have saved some of his calling-card money had he capitalized sooner on his nickname.