By Josh Escovedo
IP Law Blog
The USPTO recently refused legendary quarterback Tom Brady’s application to register the mark TOM TERRIFIC. If you’re like me, you’re wondering why Tom Brady would want to register such a trademark. Well, according to Brady, he wanted to obtain the rights to the mark to prevent people from referring to him by that nickname. But that response isn’t satisfactory for those of us who know about trademark law for a couple of reasons.
First, and perhaps most importantly, even if Tom Brady were to have obtained a trademark registration for TOM TERRIFIC, it would not have given Brady the right to preclude people from referring to him by that nickname. Trademark rights are not that broad. They do not allow you to prevent people from utilizing a word, although I’m often surprised by how many people think that’s the case. Instead, trademark rights provide the owner with the exclusive right to utilize the mark in commerce in connection with the goods designated in the application, and to some extent, related goods. So, for that reason alone, Brady’s response indicate he was either misinformed, which I can’t imagine given his access to the best intellectual property lawyers, or simply untruthful.
Second, Brady would not have been able to obtain a trademark simply because he did not want others to utilize the nickname. There are two ways to obtain trademark rights from the USPTO. You can either use the mark in commerce and provide proof of the use, or you can swear under penalty of perjury an intent to use the mark in commerce within a designated period of time. As such, if Brady simply intended to prevent others from using the mark, it’s unclear how he would have obtained such rights as he is neither using the mark in commerce, and clearly wouldn’t lie under oath simply to obtain trademark rights if he had no intent of using the mark in commerce, right? After all, he’s Tom Brady, the NFL’s golden boy.
I suspect we’ll never know why Brady actually applied for the mark, but for the reasons above, I don’t think he’s been forthcoming in his public statements. To be clear, it isn’t Brady’s motivation for seeking the mark that resulted in the USPTO rejecting his application. In fact, the denial was based on the USPTO’s finding that the mark TOM TERRIFIC is associated with Tom Seaver, the Hall of Fame pitcher for the New York Mets, which could cause Brady’s use of the mark to create consumer confusion. According to Brady, he intended no disrespect toward Seaver by trying to register the mark, and while I question his statement concerning his motivation for seeking the registration, I legitimately believe Brady did not intend to disrespect Tom Seaver. Say what you will about Brady, but he’s a class act.
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