An Example of Challenging a Trademark Application: Fans of Tom Seaver Say Tom Brady is Not “Tom Terrific”
In a follow-up to a recent article, NFL quarterback Tom Brady was recently denied a trademark registration for the phrase “Tom Terrific.” The denial was based on a challenge to the proposed trademark by the fans of an earlier famous athlete, Tom Seaver, who was a pitcher for the New York Mets in the 1960s and 1970s. Seaver is a member of the Major League Baseball Hall of Fame and is credited with helping the Mets win the 1969 World Series.
In June 2019, Tom Brady filed for a trademark registration for the phrase “Tom Terrific.” According to news reports, Brady claimed that he did not like the nickname and that he “… wanted to make sure no one used it, because some people wanted to use it.” See USA Today report here. Brady filed an application with the US Patent and Trademark Office (“USPTO”) for use of the trademark with respect to t-shirts, football-related memorabilia, and sports collectibles. The general procedure at the USPTO is that an application for registration is reviewed by a trademark examiner. During that process, the examiner will review existing trademark registrations to ensure that the mark is not already being used. The examiner will ensure that the trademark meets the various requirements of the federal trademark statute. The review process can take several months.
During the review process and after an initial decision, the examiner is permitted to accept and consider comments from the public. Applications are publicly available, and many trademark owners routinely search the USPTO’s updated listings for applications that might infringe upon their trademark. In the case of “Tom Terrific,” in early August 2019, fans of Tom Seaver sent a “letter of protest” to the USPTO claiming that “Tom Terrific” was already in use as a reference to Mr. Seaver. As noted, the federal trademark act prohibits registering certain types of trademarks. Among the marks prohibited are those that “… may falsely suggest a connection with [a] person …” unless that person has consented to the trademark registration. The Seaver fans included a sheaf of documents showing that “Tom Terrific” has been used for many years to reference Mr. Seaver. The fans also noted that Seaver has not agreed to allow the trademark registration.
Based on the information and evidence sent by Mr. Seaver’s fans, the USPTO examiner denied Brady’s application. As reported in another USA Today article — here — the examiner denied the application for “Tom Terrific” because the proposed trademark ” … identifies a name of a particular living individual whose written consent to register is not of record.”
The “Tom Terrific” case is a good example showing the complexity of applying for a trademark registration. San Diego businesses that are seeking to protect their trade and service marks should retain the services of an experienced San Diego corporate attorney.
Contact San Diego Corporate Law Today
For more information, contact attorney Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard can be reached at (858) 483-9200 or via email. Mr. Leonard’s law practice is focused on corporate, securities, contract, and intellectual property law for small and medium businesses. Like us on Facebook.