Texas A&M University football star and Heisman Trophy winner Johnny Manziel is a couple of quarters into legal battles over the trademark “Johnny Football.” Part 1 of this post focuses on the battle at the court-house against defendant Eric Vaughan for selling unauthorized “Johnny Football” t-shirts.
This post focuses on the initially refusal from the US Patent and Trademark Office for the mark JOHNNY FOOTBALL. Johnny Manziel and his entity JMAN2 Enterprises, LLC filed an application on February 2, 2013 as joint owners of a trademark application for JOHNNY FOOTBALL for clothing items as well as motivational speaking.
On May 22, 2013 the application was initially refused on several grounds. We’ll focus on the two big ones: 1) the mark is not functioning as a trademark; and 2) likelihood of consumer confusion with trademark applications for JUANITO FUTBAL and JOHNNY BASKETBALL and JOHNNY BASEBALL.
1) The mark is not functioning as a trademark — The only sample submitted to the Trademark Office of how the trademark is being used on clothing was the t-shirt image above. The trademark examiner argues the large, over-sized placement of the words JOHNNY FOOTBALL is “merely a decorative or ornamental feature of applicant’s clothing; and does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” I would have to say I agree with the examining attorney. Amazingly enough to most folks, the smaller the mark, the more likely it functions as a brand identifier. As an example, even if you purchase a shirt with the word NIKE across the front, it also has the trademark NIKE in the inside neck of the shirt as well as a hang-tag on the shirt.
2) There is a likelihood of consumer confusion with trademark applications for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL – Trademark applications are pending for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL.
The Spanish to English translation of JUANITO FUTBAL is, you guessed it, JOHNNY FOOTBALL. When the translation is similar or identical, the foreign language registration can be barrier to registration because of the concern a consumer would believe the two products are from the same source. Also notice the use of the trademark on the product packaging. It is placed on the plastic surrounding the shirt as well as on box for shipping. This is the appropriate use of a trademark on clothing.
Already, LLC in Euless, Texas applied for trademark registrations for JOHNNY BASKETBALL and JOHNNY BASEBALL. Those applications are pending and baring any third-party opposition to their registration, should be approved in the next few months. Already, LLC is in the athletic apparel business and I’ve blogged about their case with NIKE here. They also have pending applications for JOHNNY HOCKEY, JOHNNY GOLF and several other JOHNNY marks. I do not believe there was any intentional connection to Johnny Manziel.
Manziel may need a “Hail Mary” to overcome these initial refusals at the US Patent and Trademark Office.