“They’re becoming these public personas at these universities, and why not capitalize on that?”

The NCAA won’t let a student-athlete make money on his or her likeness, but there’s no rule against protecting them.

Like their counterparts in the pros, more college football stars are starting to snatch up trademark rights to their names, nicknames and fan slogans.

The NCAA generally forbids its players from cashing in on their athletic success, but by gaining legal ownership of phrases tied to their personal brands, players can pave the way for lucrative licensing deals in the future and can prevent others from exploiting their names.

This month, Ohio State University running back Ezekiel Elliott applied for trademarks to use his nicknames “Zeke” and “Eze” on merchandise, according to records in a public database kept by the U.S. Patent and Trademark Office.

Elliott also filed for a trademark on the restaurant name “Zeke’s Crop Top Bar and Grill,” a nod to the junior’s preference to roll his jersey up like a crop top. Elliott was unavailable for comment, and his father declined to explain the trademarks.

At Mississippi State University, quarterback Dak Prescott applied for the trademark on his name last fall, along with “Dak Attack” and “Who Dak,” phrases that fans have waved aloft on game-day signs.

It’s unclear to me where this is headed.  Obviously, it could mean more in a post-O’Bannon world, but we’re not there yet.  The article mentions that some schools have begun suggesting that their star athletes take steps to protect their names.  There’s also this:

Many universities, meanwhile, have stopped selling jerseys with the numbers of current players, in part because of legal concerns.

Hilbert predicts that, as universities shine the spotlight away from individual athletes, more players will step in to take ownership of their own brands.

“It’s a gradual move toward commercializing the sport,” Hilbert said. “As the demarcation between amateurism and professionalism further erodes, you’re going to see these guys get even more savvy about branding matters.”

It makes you wonder if we’ll see a day when a star athlete takes steps to preclude his school (or the NCAA) from using his name or likeness in a promotion.

11 Comments

Filed under It's Just Bidness, The NCAA

11 responses to ““They’re becoming these public personas at these universities, and why not capitalize on that?”

  1. DawgPhan

    Isnt this the JFF loophole.

    Trademark your name. Boosters company infringes. You then settle with company for infringement. then rub your fingers together.

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  2. Erk's Forehead

    You’re right – a student athlete vs. school battle over the school’s use of student-owned marks would be interesting, though my guess is that, post-O’Bannon, schools are trying to stay faaar away from commercial use of such monikers.

    One of the complications of student ownership of those marks under the current NCAA set-up is exemplified by the Prescott quote:

    “I’m not doing anything with them now,” Prescott said of the trademarks, “but when I get done playing in college, I have the option of using them.”

    Any protection of a trademark owner’s rights in a mark (no matter whether those marks are federally- or state-registered or merely protected by common law) stems from the magic words “use in commerce,” I.e., that the owner is making true commercial use of the trademark (selling products or services, advertising, licensing, etc.). Dak and the others are prevented (I believe) under the current NCAA system from benefitting from sales of their own t-shirts, etc. So the current advice they seem to be getting from their counsel/family/etc. is to file the trademark applications under an “intent to use” rationale (I.e., the owner is ramping up to begin commercial use, but has not started selling yet). That’s perfectly fine, and usually has the intended effect of a placeholder/warning sign to third parties that the owner claims rights in the mark.

    But an intent-to-use application can also be difficult in these situations because, at some point during the application process (before the USPTO will allow the trademark to register), the applicant has to prove that it is using the mark in commerce. The USPTO bureaucratic wheels move fairly slowly, but many trademark applications can be processed through to registration within a year.

    These athletes can’t currently begin commercial use until they leave the university. So if you’re filing the application in the same year you’re planning to go pro, you’re probably fine. If you’re in the position of Kenny Hill (as the article states) and file for protection of “Kenny Thrill” as a freshman, the USPTO is likely to process an (unopposed) application long before your graduation/departure date, and the trademark application may be deemed abandoned – defeating the athlete’s purpose in seeking the USPTO protection in the first place.

    Kinda sucks for the “My God, a Freshman” stars (hello, Mr. Chubb).

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    • AusDawg85

      Great insight. Not clear on the NCAA rules (who really is?) but I wonder if you can set-up a charitable non-profit in the meantime and indicate use of the trademark(s) for that purpose? I’m sure the lawyers are checking all the angles…surprised it’s taken this long.

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      • JCDAWG83

        I think that would be an awful lot of work for a college kid to do. Setting up a non-profit that would own the rights to a nickname and having the non-profit sell enough merchandise to generate any money to pay the expenses of the non-profit and have some money left over would seem to be a ton of work for a college kid and I doubt many lawyers would do it for free.

        I’m thinking this is the next step in the mindset/culture of the big signing day press conference announcement. Kid reads a ton of his own press and decides to copyright some nickname an announcer gives him to make himself feel like a big star. Didn’t this copyrighting nicknames start with “Johnny Football”? I don’t know how much Manzeil has made off of the rights to that name but I don’t think it’s been a windfall.

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      • Erk's Forehead

        Aus – thanks! That’s a really interesting point. I too know very little about the NCAA compliance rules related to student-athletes (or their 501c3s) and anything related to commercial ventures (even non-profit ones). Maybe the Senator can help us out. My guess would be that – given the multiple compliance hoops the awesome Malcolm Mitchell has had to jump through to even publish his children’s book (paying the self-publish fees himself, no football-related photos of the author or promotion, staying in constant contact w NCAA) – the NCAA isn’t likely to look favorably on letting kids SELL shirts or signed balls bearing their individually-owned trademarks on them, even for a charitable cause. (Though I wish Todd Gurley had given thought to your idea around this time a year ago…might have at least made for a better defense!)

        JC – it would be a ton of work for the kid and for a (hopefully pro bono) lawyer, even w/o the NCAA angle. The irony is that your high school football star would likely be allowed (again, I believe) to profit from sales or licensing of those same shirts, balls, etc. that a college player couldn’t. Of course, that would likely have to stop on signing day (or upon enrollment).

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        • JCDAWG83

          Other than a self created ego boost, I really don’t see the benefit for a college athlete. I don’t think he could profit from his name, nickname, likeness, etc while he was in school and once he left the school, who, as fans of the school team the player recently left, would buy stuff with a former player’s likeness or name on it? I don’t see a video game company paying a player to use his likeness or nickname AFTER he leaves college or a sports paraphernalia dealer or company doing it either.

          Maybe I don’t see it, but I can’t come up with a big money making scenario for the player.

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  3. SoccerDawg

    Chubby Time needs to be trademarked.

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  4. JCDAWG83

    I really don’t see where copyrighting some nickname benefits a college athlete.

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      • JCDAWG83

        Explain it to me.

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        • AusDawg85

          I’m not a lawyer, but I’ll play one on blogs….

          Remember all the t-shirts that started showing up last year with “I’ve got a Chubby” or similar themes? If sold by UGA, then the UGAAA has authorized the sale of the shirts and is getting a cut….not Nick. If sold by independent 3rd party vendors (as I’m guessing most were) then neither UGAAA or Nick gets a cut. If the 3rd party vendor puts an UGA logo on that shirt, then the UGAAA steps in with “cease and desist” and/or gets a court settlement (for the use of the logo, not the phrase)…but nothing to Nick. See the recurring theme here?

          Now, suppose Nick had TM’ed that phrase and similar. Not UGAAA or 3rd party vendors can use it without being subject to Nick suing with a “cease & desist” and/or getting a settlement….except it’s not clear if Nick would be allowed to receive a settlement under NCAA rules. But he would at least protect him from others (including the UGAAA) from profiting off of him in that manner and preserve his rights to use it once he gives up his amateur status.

          Now, if we would just fire Mark Richt, none of this would be a problem. 😉

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