Six-time Super Bowl champion Tom Brady has led his team to many thrilling wins on the field, but victory for his company in its attempt to trademark “Tom Terrific” is far from certain, legal experts said.
Intellectual property lawyers spoke to the Globe amid a public backlash to the pending application from TEB Capital Management to trademark the name “Tom Terrific,” which was long associated with Hall of Fame pitcher Tom Seaver.
The Washington Post reported that Brady’s company filed two applications last month with the United States Patent and Trademark Office. One covers collectible trading cards, sports trading cards, posters, and printed photographs; the other is for T-shirts and shirts, the Post reported. The applications, first publicized by Philadelphia’s Gerben Law Firm, were made on a 1B or ‘‘intent-to-use’’ basis, which means that the company is planning a line of products bearing the nickname, according to the Post.
Michael I. Santucci, a managing partner at Santucci Priore P.L., a Fort Lauderdale firm specializing in intellectual property, business and entertainment law, in an e-mail laid out some of the problems that Brady’s applications may run into.
He said an examining attorney at the USPTO may “refuse registration based on a finding that this mark, as used on the intended products, is ‘merely ornamental’ or ‘merely decorative.’ When a trademark is nothing more than a design, a saying or a name on a T-shirt, a hat (and in this case, also on trading cards), the USPTO often refuses registration based on a finding that the proposed trademark is nothing more than the artwork, design or content displayed on the product.”
Santucci added, “To be entitled to registration, a trademark must function to identity the source of the products, i.e., it must function as a brand name, not just as artwork, design or content. Unless Brady’s company intends to launch a clothing brand, bearing a TOM TERRIFIC label on the clothing, or its own brand of TOM TERRIFIC trading cards, these applications are likely to be held up.”
But like a quarterback scrambling in the pocket to avoid the pass rush, Brady’s company could try to work around that legal obstacle.
“One way to get around a refusal by the USPTO for being ‘self-laudatory,’ ‘merely descriptive,’ or ‘merely ornamental/decorative’ is to provide evidence that the mark has become so well known through extensive use on the products actually sold in commerce, and through broad consumer recognition of the mark as a symbol of the source of the products,” Santucci wrote.
But he said it would be hard for Brady’s company to provide such evidence “since he has not even used the mark in commerce yet. That time of proof usually requires years of use.”
The lawyers handling the application for Brady’s company didn’t immediately respond to a request for comment.
In addition to the legal questions, there’s also the matter of whether Brady’s camp wants to continue pursuing the trademarks, in light of the irate Seaver supporters who have taken to social media to criticize the chutzpah of the Pats’ signal caller, who’s come to be known in New England as Tom Terrific for reasons obvious to anyone with a television.
Josh Gerben, a trademark attorney and founder of the Gerben Law Firm in Washington, D.C., said Brady’s applications could run up against a section of the trademark code that says applicants cannot register a trademark that “may create a false connection with another person,” in this case Seaver.
Citing the “very public rants” against Brady’s application from celebrities including former NFL quarterback Boomer Esiason and commentator Tony Kornheiser, Gerben said, “It’s clear that there’s a significant percentage of people” who associate the nickname with Seaver.
“At this stage, I think that there should be [legal] counseling to Tom [Brady] that if there’s not a very significant business” purpose for the applications, “it would make a lot of sense to withdraw them.”
Attorney Sheldon H. Klein, principal at Gray Plant Moody in D.C. and president of the American Intellectual Property Law Association, said Seaver could argue during a public comment period on Brady’s application that “the public always associates ‘Tom Terrific’ with me.”
But Klein, who stressed that he was speaking for himself and not on behalf of his association, said that could be a tough sell, since Brady could assert the nickname has been associated with him “much more recently.”
Travis Andersen can be reached at firstname.lastname@example.org. Follow him on Twitter @TAGlobe.