Sports Trademarks Gone Wrong: Who Will Own “El Matador”?

The Dallas Mavericks are seeking a trademark in “El Matador.”  But should “El Matador” himself grant his team permission to seek the trademark?

Last week, I discussed the problems that arose from “FitzMagic,” a nickname that Miami Dolphins safety Minkah Fitzpatrick tried to register as a trademark.  His application was ultimately denied by the U.S. Patent and Trademark Office (PTO) since “FitzMagic” is much more closely associated with Tampa Bay Buccaneers quarterback Ryan Fitzpatrick.

The PTO, however, is faced with another pending trademark application that may prove to be problematic if granted.

Around the turn of the year, the Dallas Mavericks filed trademark application forms for both “The Matador” and “El Matador,” both nicknames for rookie sensation Luka Doncic.  The nickname “El Matador” was coined by Mavericks development coach Mike Pocopio, and it is starting to gain traction.

Unlike “FitzMagic,” there does not appear to be any other public figure, athletic or otherwise, who could take claim to “El Matador.”  There is another major problem that could doom this registration, however.

It is crucial to point out that Luka Doncic is not filing for registration of “El Matador,” but rather the Dallas Mavericks are.  The PTO would require that the Mavericks get written permission from Doncic to register the trademark for his nickname.  There was no such permission given in the written application to the PTO.

Essentially, the application for “El Matador” is bound to fail if the Mavericks do not get Doncic’s permission.  But what if Doncic were to consent to the Mavericks owning a trademark in his nickname?  This would create a number of legal issues, particularly for Doncic.

Luka Doncic may be having a great start of his career with the Mavericks, but it is almost an inevitability that, in some point during his career, he will move to another team. If Doncic registers “El Matador” as a trademark by himself, that nickname moves with him.  But if Doncic allows the Mavericks to trademark “El Matador,” the Mavericks organization can prevent Doncic from using that nickname once he joins a different team.  Sure, Doncic could make a deal with the Mavericks to transfer the trademark to him, but it would certainly be costly.

Interestingly enough, the NBA-NBPA Collective Bargaining Agreement (CBA) grants NBA teams the ability use player’s nicknames in league promotions.  Such league promotions include the league itself, any team, player, game, telecast, facility, platform, event, and basketball as a sport itself.  The CBA, however, is silent about trademarks.

Under the CBA, the Dallas Mavericks already have the ability to use “El Matador” in a wide variety of ways.  Selling official “El Matador” merchandise is certainly something the Mavericks can do already.  Trademark law, however, protects the exclusivity of the nickname and can be used to prevent others from profiting off of the name or tarnishing the nickname.

The Mavericks are certainly smart for trying to protect their brand and seek this trademark in “El Matador,” even at such an early stage.  However, Doncic should not blindly give the Mavericks permission to file for a trademark in his nickname.  He should do what he can to ensure that “El Matador” stays with him and not any NBA team, otherwise legal troubles between him and the Mavericks may be inevitable.

Photo Credit: Javier Mendia García

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