This is the third part of a series of posts on the three trademarks set forth in the title. The subject of this blog is a trademark for the phrase “Tom Terrific,” which was filed by the professional football player Tom Brady.
Tom Brady, through his company TEB Capital Management, Inc., filed two trademark applications on May 24, 2019. One application was associated with collectible trading cards, sports trading cards, posters and printed photographs. The other application was associated with t-shirts and other shirts.
An Office Action for each application was issued on August 22, 2019. The examining attorney did not find any marks that conflicted with either mark in the United States Patent and Trademark Office’s database. However, the examining attorney did identify two other grounds for rejecting both applications.
First, the examining attorney indicated that Tom Brady was suggesting a false connection to the former professional baseball player Tom Seaver, who also used the nickname “Tom Terrific.” The examining attorney cited a four-part test to determine whether such a connection existed, which includes these factors:
(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.
(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.
(3) The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.
(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods.
In re Pedersen, 109 USPQ2d 1185, 1188-89 (TTAB 2013)(additional citations omitted).
Then the examining attorney analyzed evidence that supported each of the factors and concluded that there was such a false connection.
Second, the examining attorney rejected the applications because the mark included the name of a living individual. Ordinarily, you cannot register a trademark that includes the name of a living individual unless you get that person’s permission. Since Tom Brady did not get Tom Seaver’s permission to register this mark, the examining attorney concluded that the application must be rejected.
The most important lesson to take away from these Office Actions is that you have to be very careful when you file a trademark application that could be perceived as being connected to a living individual. When in doubt, it is a good idea to get the permission of the individual before filing the trademark application.
Tom Brady could still get Tom Seaver’s permission to use his nickname. He may do that when he responds to the rejections on or before February 22, 2020.
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