Will “Johnny Football” Be Forced to Choose Between Trademark and NCAA Rules?

As Texas A&M freshman quarterback Johnny Manziel continues to build his legend on the field, it is not surprising that people are already trying to capitalize on his success off the field. In fact, an unrelated entity has already filed a trademark application for his nickname, “Johnny Football.”

In response, the university and Manziel’s family are also pursuing an application to register the trademark. “Everyone felt that if anybody should have ownership of this, it’s Johnny or his family,” said a university spokesperson.

The “Johnny Football” trademark will allow Manziel to prevent the unauthorized use of his name. However, in order maintain his eligibility under NCAA rules, Manziel cannot profit from the trademark. Division I rules state that student-athletes may not “accept any remuneration for or permit the use of his or her name or picture to advertise, recommend or promote directly the sale or use of a commercial product or service of any kind.” Under the rules, Texas A&M and Manziel’s family also cannot sell products featuring the name “Johnny Football.”

The rub is that in order to complete the federal trademark registration, Manziel must eventually use the mark in commerce. Under federal trademark law, an applicant must either file a Statement of Use (SOU), attesting that the mark is being used in commerce, or seek an extension within six months of the USPTO’s issuance of the Notice of Allowance (NOA). Otherwise, the application is deemed abandoned.

Applicants may continue to file extension requests every six months for up to a total of five extensions of time. However, the applicant must use the mark in commerce and file an SOU within three years of the NOA issuance date.

In this case, it is unclear if Manziel will still be a college athlete when the three-year time period expires. Therefore, this may be one case where the applicant hopes that the USPTO drags its feet.

For more information about trademark issues, I encourage you to contact me for a consultation.

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