Johnny Football

Johnny Football vs. Juanito Futbal Trademark Likelihood of Consumer Confusion

Updated 11/6/2013

JMAN2 Enterprises, LLC, the entity owned by Johnny Manziel settled the trademark lawsuit with defendant Eric Vaughan.  Read the original post on the Vaughan trademark lawsuit here.

Original Post

Texas A&M University football star and Heisman Trophy winner Johnny Manziel is a couple of quarters into legal battles over the trademark “Johnny Football.”   Part 1 of this post focuses on the battle at the court-house against defendant Eric Vaughan for selling unauthorized “Johnny Football” t-shirts.

This post focuses on the initially refusal from the US Patent and Trademark Office for the mark JOHNNY FOOTBALL.  Johnny Manziel and his entity JMAN2 Enterprises, LLC filed an application on February 2, 2013 as joint owners of a trademark application for JOHNNY FOOTBALL for clothing items as well as motivational speaking.  

On May 22, 2013 the application was initially refused on several grounds.  We'll focus on the two big ones: 1) the mark is not functioning as a trademark; and 2) likelihood of consumer confusion with trademark applications for JUANITO FUTBAL and JOHNNY BASKETBALL and JOHNNY BASEBALL.

1) The mark is not functioning as a trademark -- The only sample submitted to the Trademark Office of how the trademark is being used on clothing was the t-shirt image above.  The trademark examiner argues the large, over-sized placement of the words JOHNNY FOOTBALL  is "merely a decorative or ornamental feature of applicant’s clothing; and does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others."  I would have to say I agree with the examining attorney.  Amazingly enough to most folks, the smaller the mark, the more likely it functions as a brand identifier.  As an example, even if you purchase a shirt with the word NIKE across the front, it also has the trademark NIKE in the inside neck of the shirt as well as a hang-tag on the shirt. 

2) There is a likelihood of consumer confusion with trademark applications for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL --  Trademark applications are pending for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL. 

The Spanish to English translation of JUANITO FUTBAL is, you guessed it, JOHNNY FOOTBALL.   When the translation is similar or identical, the foreign language registration can be barrier to registration because of the concern a consumer would believe the two products are from the same source.  Also notice the use of the trademark on the product packaging.  It is placed on the plastic surrounding the shirt as well as on box for shipping.  This is the appropriate use of a trademark on clothing.

Already, LLC in Euless, Texas applied for trademark registrations for JOHNNY BASKETBALL  and JOHNNY BASEBALL. Those applications are pending and baring any third-party opposition to their registration, should be approved in the next few months.  Already, LLC is in the athletic apparel  business and I've blogged about their case with NIKE here.  They also have pending applications for JOHNNY HOCKEY, JOHNNY GOLF and several other JOHNNY marks.  I do not believe there was any intentional connection to Johnny Manziel.

Manziel may need a "Hail Mary" to overcome these initial refusals at the US Patent and Trademark Office.

Johnny Football vs. Johnny Football and NCAA Amateur Status Part 1

Update 11/6/2013

JMAN2 Enterprises, LLC, the entity owned by Johnny Manziel settled the trademark lawsuit with defendant Eric Vaughan.

Original post:

Texas A&M University football star and Heisman Trophy winner Johnny Manziel is a couple of quarters into legal battles over the trademark "Johnny Football."  The battles are happening at the court-house against defendant Eric Vaughan for selling unauthorized "Johnny Football" t-shirts and at the US Patent and Trademark Office to secure a trademark registration.

The phrase "Johnny Football"  has not only become synonymous with Manziel, arguable Texas A&M University used Manziel's name and likeness as a brand identifier/trademark for clothing.   Manziel, an amateur athlete, cannot profit from his own name and likeness.  That's where Texas A&M comes into the picture as Manziel's licensee.

Interestingly enough, the plaintiff in the lawsuit against Eric Vaughan, is an entity owned be Manziel. Texas A&M is not a party to the lawsuit.  The plaintiff alleges Vaughan sold t-shirts infringing the trademark "Johnny Football" and did not stop selling the shirts even after receiving cease and desist letters.

The suit raises some interesting NCAA Student Athlete Name and Likeness questions that I will ponder, but which I am unable to answer:

  • If Manziel is successful in his lawsuit, could his recovery of damages violate his NCAA amateur status? Maybe not according to NCAA Bylaws the recovery is not tied to Manziel's athletic performance. (See NCAA Bylaw 12).
  • But, it might be an issue with NCAA Bylaw 12.4.4 which prohibits a student athlete from using his name and likeness from promoting the student athletes' own personal business.
  • And, should the recovery actually go to Texas A&M in accordance with NCAA Bylaw 12.5.5.1.e which requires all money from the use of the student athletes' name and likeness go directly to the member institution, member conference or the charitable, educational or nonprofit agency?  While news reports say the NCAA has approved Manziel retaining any recovery, I have been unable to confirm this statement with the NCAA.
  • Because Manziel had to sign NCAA Form 08-3a which assigns his name and likeness rights to the NCAA, I'm wondering if Manziel, or his entity, are the proper party for this lawsuit?  This also ties into NCAA Bylaw 12.5.5.1.e.

You can download the NCAA bylaws for free from this link.

Here's a link to the complaint/lawsuit against Eric Vaughan.

Part 2 of this post will focus on the hurdles facing the JOHNNY FOOTBALL trademark application at the USPTO.  Juanito Futbal and Johnny Basketball might raise a likelihood of consumer confusion.