A celebrity’s personal brand can be incredibly valuable. The highest-paid professional athletes make tens of millions of dollars each year from endorsements,[1] and top-earning social media influencers can earn up to $1 million from a single Instagram post.[2] In light of the jaw-dropping checks that these individuals can clear thanks to their popularity and reach, it’s not surprising that they sometimes go to great lengths to protect their reputation and control their image.

One way a brand owner—be it a company or an individual—can seek to protect its brand’s market value is through trademark registration and enforcement. Trademark law exists in part to protect the goodwill that a brand builds with customers,[3] and to prevent competitors from “unfairly usurping the goodwill associated with the mark that the mark holder had worked hard to generate.”[4] As the dollar value of celebrity endorsements has increased, so has the prevalence of using trademark law to protect these personal identity brands—leading to the rise of what William McGeveran, writing for the Houston Law Review, termed “selfmarks.”[5] Selfmarks are “branded personal identifiers” such as “names, photos, signatures, catch phrases, nicknames, and so forth–whatever causes the public to unmistakably think of the single individual.”[6] While the line between selfmark and traditional trademark can be blurry—think Ford automobiles, Kellogg’s  cereal, or Trump hotels[7]—increasingly, celebrities have sought to exercise control over their public image and personal brand through registration or enforcement of selfmarks. However, in some cases they have no “bona fide intention to use [the mark] in commerce” as required under the Lanham Act.[8] In misusing the trademark system in this way, these celebrities are essentially operating as trademark trolls.

An intellectual property “troll” is an individual or entity that seeks protection or enforcement of intellectual property without genuine intent to use it. Patent trolls, and to a lesser extent copyright trolls, have received considerable scholarly and media attention, but less attention has been paid to “trademark trolls.”[9] There are comparatively few examples of trolling behavior in the trademark space, primarily because of the Lanham Act’s requirement that a mark actually be used in commerce for it to be continuously protectable.[10] One example is Leo Stoller, “the prototypical trademark troll,” who wielded his registration of the STEALTH trademark to extract settlements and licensing agreements from numerous businesses under threat of litigation.[11] Stoller’s money-making scheme essentially transposed the tactics of patent trolls to the trademark context. Recently, a new kind of trademark troll has emerged: celebrities who seek to register marks associated with their personal brand not for profit, but in an attempt to maintain exclusive noncommercial control of the use of the marks.

Take for example Tom Brady, who has won six Super Bowls as quarterback of the New England Patriots[12] and is the fourth highest-paid NFL player of all time.[13] Brady has limited his endorsements, partnering only with brands that fit his image as “the embodiment of class,” unlike peers who have embraced the relatable everyman persona.[14] While this has meant he brings in less up-front in ads and promotions, it is this careful management of his reputation that has allowed him to build such a successful public profile. His empire now includes a line of vegan snacks and a cookbook under his “TB12” lifestyle and nutrition brand, which despite being dismissed by some as “absurd”[15] and unaffordable,[16] sold out soon after hitting the market.[17] Independent of his TB12 venture, Brady raised eyebrows in 2019 when he filed an application to register the trademark TOM TERRIFIC.[18] The US Patent and Trademark Office (USPTO) denied the application, citing concern that the mark “may falsely suggest a connection with Tom Seaver,” former pitcher for the New York Mets who was known by the same nickname.[19] Brady received significant backlash from the registration attempt, weathering accusations that he was trying to steal the nickname from Seaver.[20] His explanation of the incident provided insight into the care with which he tries to manage his public image. In an interview, Brady denied allegations he was trying to coopt the nickname, saying instead that after hearing fans call him Tom Terrific, he “didn’t like the nickname,” and “was trying to keep people from using it.”[21] His stated intentions, if true, suggest a blatant attempt to subvert the purposes of trademark law—rather than exclusively using the mark in commerce, he wanted to prevent its use altogether. Though his registration was unsuccessful, we can assume Brady intended to use the mark to dissuade fans from further associating the nickname with him, either by threatening enforcement if the mark was used on fan-made merchandise, or by relying on the deterrent effect of mere registration. While Brady’s “Tom Terrific” registration attempt made headlines, he is far from the first celebrity to use trademarks in such a way.

Fellow quarterback Tim Tebow—though less successful on the field than Tom Brady—had better luck at the USPTO in 2012 when he registered TEBOWING.[22] “Tebowing” refers to the quarterback’s signature move where he “goes down on one knee and holds a clenched fist against his forehead while praying during games.”[23] Though Tebow prevailed where Brady didn’t, he expressed an identical sentiment when questioned about the move to file for trademark protection. “It got hyped up as Tebowing, so [the trademark] was more to just control how it’s used, make sure it’s used in the right way,” Tebow said.[24] However, as Tebow’s performance and playing time waned, so did the importance of “Tebowing.” As of this writing, neither Tebow’s official online shop nor that of his foundation seem to sell any “Tebowing” merchandise,[25] and a search of the USPTO’s online database shows that all seven TEBOWING marks once registered to Tebow’s marketing company in various classes of goods and services are now dead.[26]

And it’s not just athletes who are getting into the selfmark game. Kim Kardashian West, Kylie Jenner, and Jay-Z and Beyoncé have all registered some version of their children’s names as trademarks.[27] While the marks registered by Kardashian West and Jenner will likely play a part in their respective commercial empires,[28] Jay-Z spoke of his registration in similar terms to Brady and Tebow. He suggested that he and Beyoncé sought trademark protection for their daughter’s name Blue Ivy “simply so others couldn’t exploit it for profit.”[29] He told Vanity Fair in an interview that “[p]eople wanted to make products based on our child’s name. . .and you don’t want anybody trying to benefit off your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything.”[30]

Angelina Jolie’s bizarre feud with a perfume maker may represent the zenith of this particular type of trademark misadventure. In 2007, Jolie attempted to block Symine Salimpour from registering the name of her new fragrance, “Shiloh.”[31] Shiloh means “his gift” in Hebrew, but also happens to be the name of Jolie’s daughter.[32] When Salimpour went to the USPTO to trademark the name, Jolie filed an opposition, accusing Salimpour of trying to profit from her child’s name.[33] Jolie eventually dropped her opposition, and the perfume finally earned its trademark registration.[34] But while Salimpour may have won the battle, she seems to have lost the war. According to the USPTO, the trademark registration for Shiloh the perfume was cancelled in 2014.[35] Shiloh Jolie-Pitt, on the other hand, is now thirteen years old, and already being hailed as “an LGBTQ+ fashion icon.”[36]

While Shiloh Jolie-Pitt’s trademark fight may be over, another teenager’s is just beginning. Greta Thunberg, the 17-year old Swedish activist who gained worldwide acclaim by calling for school strikes against climate change in 2018, announced that she applied to trademark her name.[37] In a January 2020 post on Instagram, Thunberg said that her name and her movement’s “Fridays for Future” slogan were “constantly being used for commercial purposes without any consent whatsoever.”[38] Like the other selfmark registrants discussed above, Thunberg explicitly denied a desire to use the mark commercially, writing, “I assure you, I and the other school strikers have absolutely no interests in trademarks,” and that the Fridays for Future slogan “can – and must – not be used for individual or commercial purposes.”[39] While Thunberg’s disdain for commercial use would likely run afoul of the Lanham Act, her choice to register her name in the European Union may afford her wider latitude to prevent third-party commercial use without proving such use herself. One key difference between E.U. and U.S. trademark law is that under E.U. law, “[t]here is no requirement that the mark be used in commerce at the time of application or registration, and it is also not necessary for the applicant to file a statement of intent to use at any time during the process.”[40] Instead, if “the trademark has not been put to genuine use” within a continuous five-year period after registration, a third party may bring an action claiming non-use and seek review, “which may eventually lead to revocation and cancellation of the mark.”[41] This important difference in law means that Thunberg’s efforts may succeed where U.S. selfmark registrants have failed.

Many of these celebrities’ cases are sympathetic at their core—we can all understand the desire to protect our image or control how our name is used. But it remains true that preemptive trademark registration is the wrong tool under U.S. law to enforce noncommercial control over a personal identifier. Prohibition of commercial use is fundamentally at odds with the Lanham Act and the goals of U.S. trademark law. Ironically, for celebrities to successfully use trademarks to prevent third parties from using their identifiers in commerce, they would have to commercialize the marks themselves. For that reason, I believe it is unlikely we will see “selfmark trolling” emerge as a successful or common practice in the United States.


About the Author
Jackson Morawski is a first-year law student at Berkeley Law. Before law school, Jackson worked in Business Affairs at Broadway Video, Lorne Michaels’ film and television production company known for Emmy-award winning series including Saturday Night LivePortlandia, and Documentary Now!. In addition to BJESL, Jackson is a member of the Berkeley Technology Law Journal and works with Digital Rights Project, a student-initiated legal services project in collaboration with the ACLU of Northern California that focuses on the intersection of civil liberties and technology.  

Sources
[1] https://www.forbes.com/sites/kurtbadenhausen/2019/06/11/highest-paid-athletes-2019-what-messi-lebron-and-tiger-make/#2a83a9e86020
[2] https://www.cnbc.com/2018/07/31/kylie-jenner-makes-1-million-per-paid-instagram-post-hopper-hq-says.html
[3] Margaret Chon, Trademark Goodwill As A Public Good: Brands and Innovations in Corporate Social Responsibility, 21 Lewis & Clark L. Rev. 277, 277 (2017)
[4] Ann Bartow, Likelihood of Confusion, 41 San Diego L. Rev. 721, 252 (2004)
[5] William McGeveran, Selfmarks, 56 Hous. L. Rev. 333, 334-336 (2018)
[6] Id. at 333, 339
[7] Id. at 340-41
[8] 15 U.S.C. § 1127 (West)
[9] Michael S. Mireles, Trademark Trolls: A Problem in the United States?, 18 Chap. L. Rev. 815, 815-16 (2015)
[10] Id. at 828 (“[T]he defining characteristic of a troll is failure to practice the intellectual property. Because the owner of the trademark must ‘use’ the trademark to acquire and maintain rights, it is highly unlikely that the owner of a trademark who enforces its mark will also not ‘practice’ the intellectual property. Practice of a trademark is use of the trademark.”)
[11] Anna B. Folgers, The Seventh Circuit’s Approach to Deterring the Trademark Troll: Say Goodbye to Your Registration and Pay the Costs of Litigation, 3 Seventh Circuit Rev. 452, 452-53 (2007).
[12] https://edition.cnn.com/2019/02/03/sport/super-bowl-liii-patriots-rams/index.html
[13] https://www.businessinsider.com/highest-paid-nfl-players-2017-2#4-tom-brady-qb-2352-million-34
[14] https://www.ibtimes.com/peyton-manning-vs-tom-brady-endorsements-whos-no-1-commercial-appeal-1717087
[15] https://www.menshealth.com/nutrition/a19548371/tom-bradys-crazy-diet/
[16] https://www.forbes.com/sites/alexreimer/2016/08/23/tom-bradys-vegan-snacks-only-add-to-his-bourgeois-profile/#1f0622973c59
[17] https://www.theguardian.com/sport/2016/may/10/tom-brady-cookbook-200-dollars-tb12-nutrition-manual
[18] https://www.usatoday.com/story/sports/nfl/patriots/2019/06/06/tom-brady-terrific-tom-trademark-push-no-slight-tom-seaver/1367465001/
[19] http://tsdr.uspto.gov/documentviewer?caseId=sn88446266&docId=OOA20190822095048#docIndex=1&page=1
[20] https://www.usatoday.com/story/sports/2019/06/03/tom-brady-tom-terrific-trademark-nickname-angering-mets-seaver-fans/1334932001/
[21] https://youtu.be/kqdL5Gh_W2U?t=21
[22] https://www.usatoday.com/story/sports/nfl/2012/10/19/tim-tebow-trademarks-tebowing/1645333/#:~:text=
[23] Id.
[24] https://www.newsday.com/sports/football/jets/tim-tebow-coy-on-backup-rb-role-this-week-1.4133626
[25] https://timtebow.com/shop/ ; https://store.timtebowfoundation.org/collections/
[26] http://tmsearch.uspto.gov/bin/showfield?f=toc&state=4809%3A6i0yz5.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=tebowing&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query&a_search=Submit+Query
[27] https://www.refinery29.com/en-us/2019/02/224693/kardashian-jenner-kids-names-trademarks; https://www.vanityfair.com/culture/2013/10/jay-z-beyonce-blue-ivy-story; https://www.washingtonpost.com/wp-dyn/content/article/2007/07/30/AR2007073001793.html?noredirect=on
[28] https://www.refinery29.com/en-us/2019/02/224693/kardashian-jenner-kids-names-trademarks
[29] https://www.vanityfair.com/culture/2013/10/jay-z-beyonce-blue-ivy-story
[30] Id.
[31] https://www.washingtonpost.com/wp-dyn/content/article/2007/07/30/AR2007073001793.html?noredirect=on
[32] Id.
[33] https://www.vice.com/en_us/article/43dkqq/honoring-angelina-jolies-bonkers-suit-against-a-perfume-named-shiloh
[34] https://www.washingtonpost.com/wp-dyn/content/article/2007/07/30/AR2007073001793.html?noredirect=on
[35] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:igr5la.2.33
[36] https://www.scmp.com/magazines/style/celebrity/article/3046002/why-shiloh-jolie-pitt-lgbtq-fashion-icon-streetwear
[37] https://www.cnn.com/2020/01/30/us/greta-thunberg-trademark-trnd/index.html
[38] https://www.instagram.com/p/B76KMRjJPRn/?utm_source=ig_embed
[39] Id.
[40] Annette Kur, Convergence After All? A Comparative View on the U.S. and EU Trademark System in the Light of the “Trade Mark Study”, 19 J. Intell. Prop. L. 305, 310 (2012).
[41] Id.