The GOAT’s IP Strategy Isn’t Terrific

New England Patriots quarterback Tom Brady is the GOAT, the greatest of all time.  Six Super Bowl rings and counting.  

With success comes criticism.  As to the latter, Brady has been criticized over the past week because of two U.S. trademark applications that TEB Capital Management, Inc. filed on May 24, 2019.  Each application seeks to register the term “Tom Terrific” as a trademark and each application was signed by Brady, as TEB Capital’s President.   

Importantly, each application is based on TEB Capital’s statement, under oath, that it intends to use the alleged trademark in commerce.  In other words, neither application is based on actual use of the alleged trademark in commerce.  Without such use, TEB Capital has no trademark rights in, and no chance to obtain a U.S. trademark registration for, “Tom Terrific.”    

Filing those trademark applications ultimately makes no sense for three reasons.  

First, professional courtesy.  Knowledgeable sports fans know that (a) Tom Seaver is a Hall of Fame pitcher who won a World Series with the New York Mets, (b) his nickname is “Tom Terrific” and (c) “Tom Terrific” became his nickname long before anyone ever referred to Brady as “Tom Terrific.”  If, prior to filing the applications, TEB Capital (operated and advised by one or more sports fans, including Brady) did not know that Seaver’s nickname is “Tom Terrific,” then appropriate pre-filing due diligence should have revealed that information.  In short, as a nod to Seaver, those applications should not have been filed, and that is true even if Seaver, as it seems, has no trademark rights in “Tom Terrific.”      

Second, predictable backlash against those applications.  Importantly, that backlash likely is from Brady’s fans and actual or potential customers of Brady’s existing commercial endeavors. 

Third, trademark fundamentals.  Rights in and registration of a trademark can be obtained and maintained only through use of the trademark in commerce.  Here, TEB Capital has not yet used “Tom Terrific” as a trademark in commerce.  Such use could occur, but was that really the plan?

On June 6, 2019, Brady stated that he “didn’t like the nickname [Tom Terrific,]” “wanted to make sure no one used it, because some people wanted to use it” and “was trying to keep people from using it[.]” (https://www.espn.com/nfl/story/_/id/26912495/brady-tom-terrific-hoped-halt-use) 

In light of Brady’s statements, was TEB Capital’s actual strategy to use a trademark Brady does not like?            

A better question: what can TEB Capital and Brady do differently?   Two things.  One, they can enforce and protect existing rights (e.g., Brady’s right of publicity) against actual wrongdoers.  Two, they can continue to focus on and leverage the TB12 brand and not detour to a new, admittedly unliked trademark.  In that regard, Brady-related entities have used and invested in the term/logo TB12 and hold 26 U.S. trademark registrations for TB12® or a variation thereof.  TB12® and those variations are well-known, if not famous, and valuable assets.  In short, stick with what works and what you like.