The U.S. Patent and Trademark Office has refused Tom Brady’s attempt to trademark “Tom Terrific.” Here’s why Brady did it and why his approach failed.
Here in Western New York, Tom Brady is called many unsavory names, some of which I can’t put in this post. One thing I can assure you is that “Tom Terrific” is not one of them.
Earlier this year, New England Patriots quarterback made headlines when his company, TEB Capital Management, filed trademark applications for “Tom Terrific.” There were two applications: one was for shirts, and the other was for trading cards, posters, and photographs.
Brady’s action enraged New York Mets fans in particular, as “Tom Terrific” is the popular nickname of former Mets pitcher Tom Seaver. This was particularly offensive due to Brady’s timing, as Seaver’s family recently announced that Seaver was retiring from public life due to dementia. Mets fans took to social media to voice their displeasure and even held a protest.
On August 22nd, 2019, the U.S. Patent and Trademark Office (USPTO) denied Brady’s application for the “Tom Terrific” trademark. Elizabeth O’Brien, USPTO’s examining attorney for this application, refused registration because (1) the use of “Tom Terrific” falsely suggests a connection with Tom Seaver, and (2) written consent from Tom Seaver is needed since “Tom Terrific” is his nickname.
Regarding the first basis for refusal, Section 2(a) of the Trademark Act prohibits the registration of marks that falsely suggest connections with living persons. For there to be a false connection, the mark must be the same or closely similar to a person’s name, it must be uniquely and unmistakably recognizable, the person must not be connected with the applicant, and the person must be so famous that a connection is presumed.
Here, though “Tom Terrific” is not Tom Seaver’s legal name, the nickname points uniquely and unmistakably to Seaver, as evidenced by news articles, encyclopedias, sports memorabilia websites, and so on. Seaver is not affiliated with Brady in any manner, and Seaver is such a well-known athlete that a consumer would presume that “Tom Terrific” labeled goods refer to Seaver.
Regarding the second basis for refusal, Section 2(c) of the Trademark Act requires that written consent be given if an applicant seeks to use the name of a living individual. This includes nicknames like “Tom Terrific.” Seaver clearly did not consent to Brady’s planned registration of Seaver’s nickname.
Though Brady has six months to respond to this rejection, it is clear that this registration is a loss for Brady. But one may ask, why would Tom Brady seek to trademark the nickname of another athlete to begin with?
According to Brady himself, he sought to trademark “Tom Terrific” so that he could prevent other people from selling merchandise that refers to himself as “Tom Terrific.” Brady stated, “I was actually trying to do something because I didn’t like the nickname and I wanted to make sure no one used it, because some people wanted to use it.” He also admitted that “it wasn’t something I was trying to do out of any disrespect or ill manner or anything like that.”
Is Brady being honest here, or is he simply backpedaling after an unpopular move? Who knows. However, it is not an anomaly to see companies registering and selectively using trademarks in order to prevent widespread use. One relevant example is the Cleveland Indians and their former logo, Chief Wahoo.
The Cleveland Indians were well known for their Chief Wahoo logo, which they used for over 70 years. This logo was very controversial, as many found that it misappropriated Native American culture in an insensitive and racist manner. Beginning in 2019, the Indians fully phased out the Chief Wahoo logo, officially replacing it with the team’s ‘C’ logo on its official uniforms.
In addition to changing the official uniforms, a look at the Indians’ official store shows that there is no Chief Wahoo to be found. However, one can still purchase merchandise featuring Chief Wahoo if he or she visits the team’s official gift shop at Progressive Field.
If the Cleveland Indians are really done with Chief Wahoo, then why is Wahoo merchandise still sold at the team’s store? The answer that the Indians are actually limiting the spread of Chief Wahoo merchandise through its controlled sale.
In order to keep a trademark, the owner must continue to use it. If the Indians were to abandon Chief Wahoo entirely, they would lose registration of the mark through dilution, meaning that anyone could proliferate the market with Chief Wahoo merchandise. However, since the Indians still sell limited amounts of Chief Wahoo merchandise at their gift shop, they still have the power to prevent others from using Chief Wahoo through enforcement of their trademark rights.
If Brady is to be believed, then perhaps he sought to deal with the “Tom Terrific” name in the same way the Cleveland Indians deal with Chief Wahoo. Irked by this nickname, Brady might have planned on registering “Tom Terrific” and selling limited amounts of Brady-themed merchandise with the “Tom Terrific” trademark. That way, if some manufacturer wanted to launch its own “Tom Terrific” line, Brady would be able to stop that manufacturer through legal recourse.
This explanation seems a bit washy, however. For one, people really don’t refer to Brady as “Tom Terrific.” Perhaps that may be his nickname in a few circles, and there might be a few shirts out there that use the nickname. However, unlike the Indians situation, there is no great demand for such merchandise that requires Brady to resort to the strategy of limited trademark use.
Finally, as if it wasn’t clear already, “Tom Terrific” is already taken. Brady and his team of lawyers should have realized that Tom Seaver prominently used the name and that filing a trademark application for “Tom Terrific” would only result in bad PR. While Brady’s failed registration did practically nothing for his own image, it at least gave most of America’s sports fans something: one more reason to hate Tom Brady.
Image Credit: Wikipedia
Alex Betschen is a graduate of the University at Buffalo School of Law. He was a student attorney at UB’s Civil Liberties and Transparency Clinic, where he worked on cases involving government disclosure of private information and use of hacking tools. He also served as an Editor on the Buffalo Law Review and is an accomplished musician.