USPTO Denies Tom Brady’s Application to Trademark “Tom Terrific”
Tom Brady has had his fair share of nicknames over his 20-year NFL career.[1] His six Super Bowl championships have led many to refer to him as the GOAT;[2] early in his career he was known as the Comeback Kid;[3]; and his nutrition/lifestyle company has garnered him the label TB12.[4]
But in May 2019, Brady decided to pursue a trademark for one of his lesser-known nicknames: Tom Terrific.[5] Brady’s two applications for the trademark, filed through TEB Capital Management, Inc., listed that Brady intended to use the Tom Terrific trademark on t-shirts, trading cards, posters, and printed photographs.[6]
Unfortunately for Brady, on August 22, the United States Patent and Trademark Office (“USPTO”) denied his application for a trademark of Tom Terrific under sections 2(a) and 2(c) of the Trademark Act, largely because the name is more commonly associated with former New York Mets pitcher and Hall of Famer, Tom Seaver.[7] In its letter denying Brady the trademark, the USPTO was rather blunt when it ruled that the name Tom Terrific “points uniquely and unmistakably to Tom Seaver, and the fame and reputation of Tom Seaver.”[8] The letter went on to say that granting Brady’s trademark and allowing him to use the nickname on merchandise would result in consumers presuming a nonexistent connection between Brady’s merchandise and Tom Seaver.[9]
Under Section 2(a) of the Trademark Act, “the registration of a mark that ‘consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols’” is prohibited.[10] There are four requirements in order for the USPTO to find that a trademark application should be denied under Section 2(a)’s false connection provision:
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; and
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.[11]
The USPTO held that all four requirements of Section 2(a) were satisfied because the moniker Tom Terrific: (1) was the nickname of Tom Seaver; (2) uniquely and unmistakably pointed to Seaver; (3) Seaver did not consent to Brady’s selling of goods with the name Tom Terrific; and (4) Seaver was sufficiently famous that a consumers would presume a connection between Brady’s goods and Seaver.[12]
Under Section 2(c) of the Trademark Act, the USPTO is prohibited from granting an application for a trademark that “consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.[13] In its letter denying the trademark, the USPTO used similar logic to prohibit the trademark under Section 2(c) as it did under Section 2(a), holding that Brady could not trademark the use of Tom Terrific because it “uniquely and unmistakably” pointed to Tom Seaver.[14]
While Brady was given a chance to appeal the USPTO’s rejection, he decided not to do so, claiming he regretting applying for the trademark at all.[15] Brady maintains that he did not intend to upset any Tom Seaver fans when he applied to the trademark, and that he only sought the trademark because he wanted to prohibit others from using the Tom Terrific nickname when referring to Brady.[16] In the end, Brady called it a “lesson learned.”[17]
Footnotes
