MVP v. Mom: Trademark Dispute between Luka Doncic and His Mom Explained

MVP v. Mom: Trademark Dispute between Luka Doncic and His Mom Explained

Luka Doncic is without a doubt a basketball prodigy. At age sixteen, Doncic became a professional basketball player when he signed with Real Madrid, becoming the youngest to do so in club history.^[1] He went on to dominate the Euroleague. He won a championship in 2018, the Euroleague MVP, and was selected to the Euroleague 2010–2020 All-Decade Team.^[2]

After dominating European basketball, Luka Doncic declared for the 2018 NBA draft.^[3] During his rookie season, Doncic was unanimously selected to the NBA All-Rookie First Team and won the 2018–2019 NBA Rookie of the Year.^[4] Luka Doncic continued his dominance in the NBA. He is the youngest player in NBA history to lead the league in triple doubles at the age of 21 years and 168 days old.^[5] He is the first teenager in NBA history to achieve a thirty-point triple-double and had “the highest-scoring game ever by an NBA player in [their] playoff debut.”^[6]

His dominance in the NBA led the Dallas Mavericks to give him a contract worth $207 million, the largest contract in club history.^[7] Unsurprisingly, Mr. Doncic is looking to monetize his stardom through various products and licensing agreements. However, he has run into trouble. He is currently in a legal battle with his mother over a trademark she previously registered with his consent. The timeline of events is discussed below.

Luka Doncic gave his mother (Mirjam Poterbin) consent to trademark his full name while he was a rookie with the Dallas Mavericks.^[8] The USPTO granted the trademark for “LUKA DONCIC 7” on January 7, 2020.^[9] Mr. Doncic attempted “to negotiate a transfer of control for that registration” which his mom did not grant.^[10] Doncic then sent a letter on July 23, 2021, expressly indicating his revocation of consent for that trademark.^[11] Doncic later created his own company, Luka99, Inc. That company filed an application for the trademarks “LUKA DONCIC” and “ORIGINAL HOOPS OF LUKA DONCIC.” The applications for both trademarks were denied because of their similarity to the trademark owned by his mom, “LUKA DONCIC 7.”^[12] Luka Doncic’s petition to cancel the “LUKA DONCIC 7” trademark relies on three different claims: (1) the trademark falsely suggests a connection to him, (2) the trademark “remains registered without [his] consent,” and (3) abandonment of the trademark.^[13]  Each count is discussed in further detail below.

Count 1

Mr. Doncic claims the trademark “LUKA DONCIC 7” creates a false association with him despite not being “affiliated or associated” with the mark because of his global recognition as an NBA superstar.^[14] Essentially, Doncic is alleging any product or service which uses “LUKA DONCIC 7” will be presumed to be affiliated with him.^[15] Thus, Doncic has requested the trademark to be cancelled “pursuant to Section 2(a) of the Trademark Act…” which allows for the refusal of a trademark “falsely suggest[ing] a connection with persons, living or dead…”^[16]

Anyone who sees the trademark “LUKA DONCIC 7” would rightfully assume the product bearing that trademark is associated with Mr. Doncic. However, it is unclear if the permission he gave his mom is capable of being revoked to cancel a “previously registered trademark.”^[17]

Count 2

Mr. Doncic also alleges the trademark should be cancelled pursuant to Section 2(c) of the Lanham Act. This allows for the cancellation of a trademark that contains a name that “identif[ies] a particular living individual” without their consent.^[18] However, the issue here is that Mr. Doncic admitted to giving his mother consent “for the use and registration of his name. . . as a trademark and/or service mark” on November 26, 2018.^[19] However, Mr. Doncic claims that on July 23, 2021, he “expressly revoked” this consent by letter.^[20] Once again, the issue here is whether this type of consent can even be revoked. Unfortunately, this legal issue remains unresolved.^[21] Even though Mr. Doncic was an adult when he gave consent, the Trademark Trial and Appeal Board will consider that “he was fairly young and inexperienced” when he gave consent.^[22]

Count 3

Additionally, Mr. Doncic alleges his mother has not used the trademark for any goods or services.^[23] He also alleges that his mother has no intent to use the trademark, “and therefore has abandoned any and all rights to it.”^[24] Abandonment of a trademark is sufficient cause to cancel the previous registration of that trademark.^[25] Courts have stated the two elements required for abandonment are: (1) non-use and (2) intent not to resume use.^[26] Non-use for three consecutive years serves as prima facie evidence of abandonment.^[27] Once the prima facie claim of abandonment is established, the burden shifts to the registrant to show “actual use during the relevant period or intent to resume use.”^[28] “Use” of a trademark is defined as the “use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.”^[29] Additionally, a registrant’s mere assertion of their intention to use the trademark will not satisfy the intent to resume requirement.^[30] Basically, if the owner of a trademark has not used the trademark for three years, they must show they had an intention to use the trademark in a commercial manner. Additionally, the owner will need to demonstrate more than just a mere assertion of their intention to use the trademark.

In trademark abandonment cases, the registrant can demonstrate an intent to resume use through a “showing of special circumstances which excuse a registrant’s nonuse.”^[31] To demonstrate an excusable non-use, the registrant must show that because of the special circumstances faced by the registrant, her non-use is typical of that of a “a reasonable business[person], who had a bona fide intent to use the mark in United States commerce…”^[32] Additionally, the registrant must produce evidence of “concrete plans to resume use. . . when the conditions requiring suspension abate.”^[33] Furthermore, the registrant’s intent to not give up the trademark does not demonstrate an intent to resume use.^[34] Put simply, the registrant can show they had an intention to use the trademark if there were special circumstances that prevented them from being able to use it. However, the registrant still needs to show they had actual plans to use the trademark once the circumstances preventing them from using it were no longer present. Additionally, the owner of the trademark cannot simply point to their refusal to give up the trademark as proof that they have an intention to use it.

The “LUKA DONCIC 7” trademark was registered to Ms. Poterbin on January 7, 2020.^[35] Ms. Poterbin has not released any products or services associated with the trademark. Therefore, the three-year statutory period will be triggered on January 7, 2023, producing the presumption of abandonment. However, Ms. Poterbin could argue that Mr. Doncic’s revocation of consent on July 23, 2021, created a special circumstance which excused her non-use. In that case, she would need to demonstrate that her non-use after receiving the letter was what “a reasonable business[person], who had a bona fide intent to use the mark” would have done.^[36] She would also need to show she had actual plans to use the trademark once the disagreement with her son was solved. The abandonment claim is likely Mr. Doncic’s strongest, because it is unclear if Mr. Doncic’s revocation of consent can cancel a trademark that was already registered.

Regardless, this case has wide implications. College athletes who now have Name, Image, & Likeness Rights will be paying close attention to see if the type of consent Mr. Doncic gave can be revoked later on.^[37]