Can Tom Brady trademark “Tom Terrific” despite use thereof by a Mets pitcher over 50 years ago?

            In May of this year, New England Patriots quarterback, Tom Brady, filed a set of applications with the United States Patent and Trademark Office (USPTO) to register “TOM TERRIFIC” as a trademark. In particular, TEB Capital Management, Inc., Brady’s management company, filed two applications, one in International Class 16 for “collectible trading cards; sports trading cards; posters; printed photographs” and one in International Class 25 for “t-shirts; shirts.” In response, the USPTO issued identical rejections to both applications based on what is known as “false connection” and “name of living individual.”

            The USPTO examining attorney’s first refusal, “false connection,” provides “the applied-for mark consists of or includes matter which falsely suggests a connection with Tom Seaver.” Moreover, the examiner states that “Tom Seaver is so well-known that consumers would presume a connection.” Tom Seaver is a former American baseball player who pitched in Major League Baseball from 1967 to 1988 for the New York Mets, Cincinnati Reds, Chicago White Sox, and Boston Red Sox. In this time, Tom Seaver apparently received the nickname “Tom Terrific.”

            A false connection exists when the applicant’s applied-for goods or services are of a type that the named person or institution sells or uses, and the named party is sufficiently famous such that it may be inferred that the purchasers of the goods or services would be misled into making a false connection of sponsorship, approval, support, or the like with the named party. In the present situation, the examiner provides that based on the evidence provided in the letter of protest, including news articles, encyclopedia excerpts, and columns, the nickname “Tom Terrific” refers to Tom Seaver.

            The examining attorney’s “false connection” decision is based on a letter of protest that was received by the USPTO in conjunction with Brady’s application. A letter of protest may be filed by a third party who wishes to bring to the attention of the USPTO evidence bearing on the registrability of a mark. Such procedure applies only to pending applications and is intended to aid in the examination process without causing undue delay. When a letter of protest is received by the USPTO, the Office of the Deputy Commissioner for Trademark Examination Policy first reviews the document to determine whether the submitted information should be given to the examining attorney assigned to the relevant application for consideration. In so doing, the Deputy Commissioner considers only the record in the application and the evidence submitted by the protestor.

            The “false connection” rejection differs from a classic likelihood of confusion rejection in two important regards. Primarily, a “false connection” refusal requires the potential for confusion to be based on association with a particular individual, either through use of that individual’s nickname or given name. Additionally, for a claim of false connection, a party need not allege proprietary rights in the name for purposes of standing.

            The USPTO examiner further rejected Brady’s application based on “name of living individual” in stating that “Tom Terrific” identifies Tom Seaver, because it was his nickname. More specifically, the USPTO examining attorney stated that registration was refused “because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.” An applied-for mark will identify an individual if the person bearing the name is so well known that the public would reasonably assume a connection or the person is publicly connected with the business in which the mark is used. Such a rejection applies to nicknames as well as legal names. In this way, the examiner contends “’TOM TERRIFIC’ points uniquely and unmistakably to Tom Seaver.”

            Even if Tom Brady remains unable to register “Tom Terrific” as a trademark with the USPTO, registration is not a requirement to trademark rights. An unregistered, or common law, trademark is a mark which is enforceable by virtue of its ability to signify or distinguish a product or service as belonging to a particular source. However, an unregistered trademark does not provide the trademark owner the same extent of protection as the owner of a federal or state registered mark. For example, as opposed to federally registered trademarks, common law trademarks are usually enforceable only within the geographic region or locale where the trademark owner is using it in business.

            Not only has the USPTO rejected the mark’s registration, the attempt has been widely panned in New York City, where Tom Seaver is widely remembered. In response to such criticism, representatives for Tom Brady insisted that the trademark application was an attempt to prevent third parties from capitalizing on the unprotected nickname, both to Tom Brady and Tom Seaver’s detriment. Indeed, Brady’s agent explicitly contends “there is no intention ever to impact Tom Seaver’s legacy.”