Can NCAA Rules Keep 'Johnny Football' From His Trademark?

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hi-res-156906706_crop_650x440The NCAA’s rules and regulations governing the commercialization of their athletes have been in full effect for decades. It was, the thinking went, a safeguard for student-athletes. A measure designed to inculcate them from outside pressures, third parties whose interests lie outside those of the student-athlete’s. Today, these regulations forbidding a student-athlete’s ability to self-market are increasingly coming under fire. The poster athlete, emblematic of a system in increasing turmoil, is a one Johnny Manziel. You might recognize him by the moniker, “Johnny Football.”

Johnny Manziel is the star quarterback of Texas A&M. Heavily recruited out of high school, the all-state QB eventually selected the Aggies. In his first season as a redshirt freshman, Manziel set the NCAA history books on fire. He broke Archie Manning’s (father of NFL stars Peyton and Eli Manning) 43 year-old record of 540 yards of total offense with 557. Two weeks later, he did it again with 576 yards. National prominence was assured several weeks later after the freshman defeated then No. 1 ranked Alabama in Tuscaloosa. That December, Manziel became the only freshman to win the Heisman Trophy.

Prior to the 2012 breakout season, fans and students at A&M nicknamed Manziel “Johnny Football.” Supremely simple, evoking a wholesomeness that borders on one-dimensionality, the moniker both elevated and eclipsed the athlete. It is, and continues to be, the most defining asset of Manziel.

Not everyone knows that Manziel broke Archie Manning’s record last year, or that he was a freshman while doing it. They know Johnny Football. Not since Earvin “Magic” Johnson has a college athlete had such a recognizable nickname. The name promotes myth. It represents greatness. It signifies and magnifies Manziel’s skill and talent, setting him aside from the rest of the student athlete body for specific recognition. It also means money, which is the primary problem for NCAA athletes.

Last season, JMAN2 Enterprises, LLC, started marketing T-shirts with the “Johnny Football” logo on them. JMAN2 is not affiliated or licensed by the NCAA, Texas A&M, the SEC or the Manziel family. A man named Eric Vaughan, an entrepreneur with an eye for catchy, marketable merchandise, controls the company. Vaughan reached a level of local fame several years ago when he began producing “Yu is My Homeboy” T-shirts, in honor of Texas Rangers’ pitcher Yu Darvish. The Manziel family, recognizing the value of potential trademark rights in the name, filed a federal suit against Vaughan and JMAN2 Enterprises.

The trademark suit is ongoing. The issue facing the Manziel family is that A&M or the Manziel family legally could not market “Johnny Football”. Had either party engaged in that activity, even if no profits went to Manziel, he would lose his amateur status and be declared ineligible by the NCAA. This policy leaves Johnny Manziel with an impossible legal argument both in his lawsuit against Vaughan and with the USPTO. He must convince the USPTO to grant him trademark rights, to the exclusion of all others, but he cannot use it in commerce until he goes pro. However, the USPTO does casino pa natet not allow this. A person cannot squat on potential trademark rights because they expect to use it sometime in the future. At best, an individual can file an “intent to use” application with the USPTO. This would require documentation of a bona fide intent to use the mark in commerce within six months, a period of time that is in no way long enough for a sophomore player.

Likewise, in Manziel’s lawsuit with Vaughan, he must demonstrate actual use of the mark prior to Vaughan’s usage. And once again, success in court with that argument leads to ineligibility on the field. Manziel finds himself in a legal catch 22.

To be sure, the mark itself, “Johnny Football,” has its own problems. The USPTO, having already reviewed applications from Vaughan and Manziel, has released preliminary findings that the mark is both “merely decorative,” and does not function to properly identify the source of the product. Preexisting trademarks further complicate matters. “Jonny Baseball,” and “Johnny Basketball” both predate the Manziel’s mark. Their owners have filed responses to Manziel’s application arguing that should he receive the trademark, a likelihood of confusion would arise with their own marks, injuring their brand. Finally, and perhaps most bizarrely, a woman from Plano, Texas recently received her registration for the mark “Juanito Futbol” this past month. This further impedes Manziel’s chances.

The question that surfaces from all of this, is ‘is it worth it, really, for Manziel to pursue this trademark?’ His athletic ability should provide millions. The NFL, a $10 billion industry, will surely take care of Manziel, and corporations eager to capitalize on his star status surely will pursue him. How much is a trademark worth?

Quite a lot, actually.

Consider this: Michael Jordan’s co-owned trademark with Nike, “Air Jordan,” nets $2.5 billion dollars annually in merchandise sales. It contributes to Michael Jordan’s annual income of 80 million dollars. He hasn’t touched a basketball for a decade. Even when he did, the most money Michael Jordan ever netted in a single season was $30 million dollars. Then there’s Qiaodan, a $1.7 billion yuan company in China. The name Qiaodan is simply the Chinese transliteration of “Jordan.” The company has become one of the largest sporting good stores in Asia. The point is, that this trademark could be worth A LOT of money to Manziel for a very long time.

The NCAA should relax their rules and allow universities, which can use marks in commerce without penalty, to trademark nicknames pertaining to their star athletes then transfer the mark when the athlete turns pro. The university would act as a paid trustee for the athlete, and the student would maintain rights in the trademark. This is only a suggestion.

Clearly, the current NCAA regulations may be depriving athletes of their intellectual property.

About Sean Dugan

Sean Dugan is a recent graduate of the University of San Francisco School of Law and holds a B.A. in History from the University of Berkeley. His legal interests are expansive but he holds a special affinity for intellectual property rights. When not focusing on the law, Sean enjoys politics, the AMC series 'Breaking Bad,' and the city of San Francisco. His greatest passion is cheering for the Boston Celtics. His second greatest passion is rooting against the Los Angeles Lakers.
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