Texas A&M quarterback Johnny Manziel is now the leading candidate for the Heisman Trophy, which will be awarded tonight. If he takes home the Heisman, interest in “Johnny Football” will be at an all-time high. Accordingly, I wanted to take a closer look at the trademark issues surrounding Manziel’s nickname. As I recently discussed on “The Beat of Sports”, there is a fascinating interplay between trademark law, the right of publicity and NCAA rules.
To recap, Texas A&M is reportedly working with the family of Johnny Manziel to secure a trademark of Manziel’s nickname, “Johnny Football.” A trademark application has already been filed for “Johnny Football”, but it wasn’t filed by Texas A&M or Manziel. It has been reported that the applicant is not connected to A&M or Manziel and but is cooperating with the school.
The Right to Publicity
Although Manziel was not the first to file a trademark application for “Johnny Football”, Manziel can oppose the application on the grounds that it violates his right to publicity: that is, his right to control the commercial use of his likeness. Under this theory, Manziel would argue that the nickname and his persona are inextricably linked, therefore, others should not be allowed to profit from the use of the phrase “Johnny Football”, which necessarily conjures up images of Manziel. I covered this issue in connection with Terrell Suggs and the mark “Ball So Hard University.”
NCAA rules require a student-athlete, or a school on behalf of a student-athlete, to stop any unauthorized use of the student-athlete’s image. Texas A&M, therefore can assist Manziel in opposing the trademark application that has been filed.
Manziel’s Trademark Application
According to reports (which may or may not be accurate), Manziel intends to file his own trademark application rather than simply oppose the application that has been filed. Manziel has a significant hurdle in filing his own application – he must demonstrate that the mark is used “in commerce.” Before a trademark can be registered with the U.S. Patent and Trademark Office (USPTO), the applicant must demonstrate that the mark is used in commerce. In other words, the applicant must show that he has used the mark in connection with the advertising or sale of goods and services as specified on the trademark application. An applicant may file an application on an “intent to use” basis, which allows the applicant to prove use in commerce after the mark has been reviewed by the USPTO.
The Catch 22
NCAA Rules and the “use in commerce” requirement present a dilemma for Manziel. The NCAA prohibits student-athletes from receiving financial benefits from endorsements or the use of their image. If Manziel were to sell “Johnny Football” t-shirts, he would be violating NCAA rules and risking his eligibility. If Manziel doesn’t use the “Johnny Football” mark in connection with the sale of some goods or services, he will not be granted trademark protection.
Manziel’s strategy may be to file a trademark application on an “intent to use” basis. Once the mark is approved Manziel has approximately three years (if he uses every available extension of time) to prove that the mark is used in commerce. With three years of NCAA eligibility remaining, this would allow Manziel to wait until his college career is complete before profiting off of his image and reciving trademark protection for “Johnny Football.”
What about O’Bannon?
Texas A&M’s assistance of Manziel to procure trademark protection for “Johnny Football” is an admission of an obvious fact: there is commercial value associated with the use of the images and likenesses of college athletes. This is one of the issues that is being litigated in the O’Bannon v. NCAA class action lawsuit.
Tonight, Manziel may join Davey O’Brien, Roger Staubach, Jim Plunkett, Doug Flutie and other quarterbacks to win the Heisman Trophy. But we may need to wait three years to see whether Manziel can capitalize on and acquire trademark rights in his nickname, “Johnny Football”