Thursday, August 8, 2013

By definition, a college athlete with a federally registered trademark is violating NCAA rules.

By definition, a college athlete with a federally registered trademark on the principal register is making money from the mark. One of the requirements of a valid trademark is a bona fide use in commerce.

"Use in commerce" means that the mark is being used immediately on or in connection with goods or services as of the date of filing. In filing a trademark application, the applicant must file an affidavit of use -- a written statement under oath and subject to the penalty of perjury -- that the mark is owned by the applicant and is being used in commerce. If the applicant does not own the mark, or is not using it in commerce, he or she is committing a fraud on the United States Patent and Trademark Office (USPTO).

Johnny Manziel received special permission from the NCAA to protect the "Johnny Football" mark, but he did not necessarily get permission to use the "Johnny Football" mark in commerce until his eligibility expires. He could have protected "Johnny Football" without using it (through the common law). In November 2012, Manziel filed an intent-to-use trademark application, like I would expect a college athlete to do.

On February 2, 2013, Manziel filed a trademark application on the principal register for "Johnny Football." In other words, he stated under oath that he was using the "Johnny Football" name in commerce (making money from it), and that he owned the mark.

It really is as simple as this: Either:
  1. Manziel lied to the USPTO by submitting an affidavit of use when he was not using the mark in commerce; or
  2. Manziel is violating NCAA rules by profiting from the mark (e.g., by signing autographs); or
  3. Manziel misunderstood the NCAA's special permission, because he would necessarily have had to use the mark in commerce if the NCAA allowed him to pursue federal trademark protection.
There is no middle-ground.

(For further reading: "The conflict between U.S. trademark law and NCAA rules: The "Johnny Football" scenario.")

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