The “Prime Effect”: The Importance of Sports Trademarks in 2023
Deion Sanders has provided a blueprint for building a personal brand as an athlete and, most recently, as a coach. Sanders, during his playing days, was known to the world as “Prime Time” and his signature bandana became so distinctive that it is permanently tied onto his bust in the Pro Football Hall of Fame.[1] Though it is undisputed that Sanders is one of the best athletes of all time, his ability to captivate the public and capitalize on his personal brand during his coaching career has been even more remarkable.
In 2023, following two years at Jackson State University, Sanders became the head coach of Colorado University. In less than a year tenure, Sanders has everyone talking about Colorado Buffaloes Football, and most notably Sanders himself.[2]
In September 2023, amid the media craze, Sanders (as Prime Time Enterprises, Inc.) filed for nine new trademarks, jumping on the chance to capitalize on some of his most famous one-liners and nicknames from the season.[3] The pending marks include, “COACH PRIME,” “PRIME EFFECT,” “IT’S PERSONAL,” and “AIN’T NOBODY CARE.”[4] Sanders seeks to trademark the latest phrases for clothing items, including sleepwear, blazers, sweatsuits, and outerwear.[5] If the registration of these trademarks is successful, the registration will likely play a critical role in the longevity and protectability of Sanders’ catchphrases and personal brand.
The Lanham Act is the key statute in understanding the breadth of federal trademark protection.[6] Section 43(a) of the Lanham Act explains that any word, term, name, symbol, device, or any combination thereof, may be a protectable trademark.[7] Protectability of a mark depends on distinctiveness and consumer recognition.[8] To meet the distinctiveness requirement, a mark may be distinctive by nature, or it may acquire distinctiveness overtime by earning recognition as a source-identifier in the public eye, which is often referred to acquiring a “secondary meaning.”[9] A distinctive mark is one that is not descriptive or generic and is either arbitrary as applied to the goods and services, or if not entirely arbitrary, it requires some sort of imaginative leap to make the association.[10]
Though Sanders may have mastered the craft of creating a distinctive brand, he is far from the first athlete (or coach) to utilize trademark registration as means of brand protection. Michael Jordan and Lebron James have trademark protection for their own names.[11] Former NY Jets linebacker Bart Scott obtained registration for “CAN’T WAIT,” a phrase which he used in an interview following a big playoff win.[12] Tom Brady has 20 trademarks covering his namesake, most recently “TOMPA BAY,” after he signed with the NFL Tampa Bay Buccaneers.[13] Needless to say, the sports world has embraced the utility of trademark registration––and the trend does not seem to be slowing down.[14]
Perhaps the two most important benefits of trademark registration are that it establishes the registrant’s ownership of the mark and her right to exclusive use of that mark in commerce.[15] Thus, registrants can protect and enforce their rights more effectively in court if they are registered.[16] It should be noted, however, that to protect these rights, the trademark owner must continue to use the mark in commerce.[17]
In the context of sports, and athletes’ personal brands in particular, trademark registration has become an incredibly useful tool for building and protecting athletes’ personal brand. In our world today, athletes are highly publicized, which allows for strong brand recognition and amplification of everything from their signature phrases to viral moments.[18] An athlete has the potential to create immense profit if she can protect her brand through trademark.[19]
NCAA athletes now can capitalize on their Name, Image, and Likeness (NIL), and may also receive trademark and copyright protection.[20] As college athletes have begun making millions off their NIL deals, seeking trademark registration is an important step in insuring profitability of college athlete’s personal brand.[21]
In an era where social media dominates, interview sound bites go viral, and personal brand is arguably more important than ever – trademarks in the world of sports have taken on a new importance.[22] Sanders provided a blueprint for how to capitalize on a personal brand in the public eye––and trademarks are at the forefront. Athletes and coaches everywhere should take note.
Footnotes
