Athletes are constantly attempting to capture a trademark by which they can encapsulate themselves, a moment, a highlight, or anything they want that is distinguishable to them. Trademarks allow audiences to recognize and associate certain terms or phrases with players or people. For example, Tom Brady has over 130 active trademarks, ranging from various illustrations of his TB12 brand to the phrase “Tompa Bay,” coined when he left the New England Patriots for the Tampa Bay Buccaneers. [2] While not every player is as proactive as Brady in securing multiple trademarks, most athletes actively seek to develop their personal brands. [3] Dallas Mavericks superstar Luka Doncic is not an exception. Doncic is one of the young superstars of the NBA who has much to gain from the meaningful use of his name and likeness. However, he has recently filed a petition to cancel the “Luka Doncic 7” trademark, which is owned by his mother, Mirjam Poterbin. [4]
Poterbin owns the rights to this valuable piece of intellectual property because, at the time of the filing for this trademark in 2018, Doncic relied on her to help with his business affairs. Doncic consented to allow Poterbin the right to file the online application for “Luka Doncic 7.” [5] At that stage in his career, Luka was transitioning from the European basketball model he had been playing in since he was 13 to the NBA and assimilating to U.S. culture.
Four years later, Doncic is 23 and making tens of millions of dollars annually. He and his representatives feel he can handle his own business affairs without family intervention. And, as a result, he founded Luka77, Inc. to promote his name and likeness. [6] Luka believes this company should own and control the rights to all Luka Doncic trademarks, including the “Luka Doncic 7” trademark, so he filed the petition to reclaim or cancel this property.[7]
The petition is procedurally permitted because a petitioner may file a petition to cancel within five years of the initial trademark registration date. [8] For Doncic to prevail on his petition, he must show a reasonable basis for believing that he is being harmed by the trademark’s registration. [9] The most likely avenue for Doncic and his team to explore is proving Poterbin has profited from the trademark, which they may argue shows income that should have gone instead to Doncic. [10]
While proof of harm is a strong foundation for a petition to cancel a trademark, it would behoove Doncic to show precisely why the trademark no longer warrants the protections afforded to registered trademarks. [11] Two viable arguments are through trademark dilution and likelihood of confusion. Through trademark dilution, Doncic must show that the ”Luka Doncic 7” mark is weakening or harming the distinctive quality of his other marks housed under Luka77, Inc. This claim may be harder to prove because it requires a showing that his brand is truly famous and distinct. Through likelihood of confusion, Doncic must show that consumers would be confused as to the source of the trademark. [12] In either argument, Doncic will attempt to additionally prove that the ”Luka Doncic 7” trademark is so clearly referencing himself that anyone else having rights to profit off it is unjust. [13]
Another major point that will swing Doncic’s case is Doncic revoking the consent he gave to Poterbin when he was 19. [14] Revocability of consent is ambiguously used in trademark law, and it is particularly tricky as applied to this case due to unique factors like Doncic’s age at the time of consent, the value of the mark then versus now, and Doncic’s relationship with his mother.[15]
The European model for developing professional basketball players is widely praised for its ability to develop young players and has significantly closed the talent gap between European and American players in recent years. However, being a full-fledged professional athlete at such a young age leaves kids heavily reliant on others at the genesis of their careers, leaving them potentially vulnerable to situations like what Doncic is experiencing. [16] Moreover, there is talk of the minimum draft age reducing from 19 to 18 for American basketball prospects, which will open the door for more frequent, similar trademark issues stateside. [17]
Lower draft eligibility ages and the increasing importance of Name, Image and Likeness in college sports is leading agents, advisors and collectives towards entering into more formal business relationships with younger athletes. [18] Even with younger athletes, agents have a fiduciary duty to act in their client’s best interest as it pertains to their business interests. [19] If an agent were to breach this duty, the athlete may have cause of action for breach of contract or negligent representation in tort. [20] This standard is murkier when there is an informal relationship between a young athlete and a family member who is given consent to file for a trademark on his/her behalf. Thus, to avoid ambiguity, athletes prefer employing formal agents who can represent them in these types of endeavors because a formal relationship provides potential avenues of recovery against the agent should there be a breach of fiduciary duty.
Ideally, Poterbin and Doncic will resolve this issue themselves without much dispute. If this issue continues with more legal action, it will set new precedent regarding revocability of consent that will surely impact college athletes, who will undoubtably be more wary of granting consent to allow another party to trademark their names. [21]
References:
[2] Gerben Intellectual Property, Tom Brady Trademarks, (16 Sep. 2022) https://www.gerbenlaw.com/trademarks/athletes/tom-brady/#97301695
[3] Investor’s Digest, Athletes and Trademarks, (28 Jun. 2018) https://www.inventorsdigest.com/articles/athletes-and-trademarks/
[4] Jonathan Small, NBA Star Luka Doncic is in a Trademark Battle – With his Mom (13 Sep. 2022) https://www.entrepreneur.com/business-news/an-nba-star-is-in-an-epic-trademark-battlewith-his-mom/435264
[5] Michael McCann, Luka Doncic Embroiled in Unusual Trademark Dispute With His Mother (13 Sep. 2022) https://sports.yahoo.com/luka-don-embroiled-unusual-trademark-130000080.html
[6] Timothy Geigner, Luka Doncic’s Trademark Dispute with His Mother Is Uncharted Legal Territory (14 Sep. 2022) https://www.techdirt.com/2022/09/14/luka-doncics-trademark-dispute-with-his-mother-is-in-uncharted-trademark-territory/
[7] Id.
[8] CLG Attorneys, Trademark Cancellation Proceedings: A Practical Guide to Filing and Responding to TM Cancellations https://www.cohnlg.com/how-to-cancel-a-trademark-application/
[9] Id.
[10] Id.
[11] Id.
[12] Id.
[13] Kyle Jahner, Luka Doncic Bid to Get Trademark Back From Mom a Legal Jump Ball (19 Sep. 2022) https://news.bloomberglaw.com/ip-law/luka-doncic-bid-to-get-trademark-back-from-mom-a-legal-jump-ball
[14] Id.
[15] Id.
[16] Sam Meyerkopf, The Three Advantages Europe Has over the U.S. in Youth Basketball https://point3gear.com/blogs/blog/16659964-the-three-advantages-europe-has-over-the-u-s-in-youth-basketball
[17] Shams Charania, Shams: Where the NBA CBA Talks Stand, plus new issues on Players Association agenda (19 Sep. 2022) https://theathletic.com/3607549/2022/09/19/shams-nba-cba-negotiations/
[18] Michael Smith, A new breed of agency (6 Dec. 2021) https://www.sportsbusinessjournal.com/Journal/Issues/2021/12/06/Upfront/Name-Image-Likeness.aspx
[19] Restatement (Third) of Agency § 1.01 (2006)
[20] Id.
[21] TECHDIRT, Luka Doncic’s Trademark Dispute With His Mother Is In Uncharted Trademark Territory (16 Sep. 2022) https://abovethelaw.com/2022/09/luka-doncics-trademark-dispute-with-his-mother-is-in-uncharted-trademark-territory/