Monday, July 13, 2009

Nicknames and Trademarks

Dear Rich: I'm trying to get a trademark for a nickname. The nickname has been seen in newspaper articles and media referring to different individuals who accomplished similar feats throughout the years -- imagine it is a nickname like "Home Run King" (although this is not the nickname). I have done an unprofessional trademark search and it seems that nobody has claimed it as a trademark. My friend is the original record holder of the feats referred to by the nickname. Although others have been called by this nickname over the years, and they have come close, nobody has broken the records earned by my friend to achieve the nickname. Now my friend wants to start selling pictures and memorabilia and he wants the nickname to be only related to his name. (My friend has already got the domain name. What class should my friend file in when seeking a trademark. He may be selling lots of things with his autograph: sports equipment, clothing, and my friend also wants to protect his nickname for writing books and making movies. My friend can only afford to start with one class at the moment. Which one would give the most protection? By the way, is LegalZoom a decent company to use? The short answer to your first question is that you should pick the goods or services that you believe will be most lucrative (and for which you wish to preclude competitive use). It all comes down to how you are currently making money, and the ways in which you have a bona fide intent to make it in the futureFor example, if your friend is currently entertaining at sports memorabilia shows then perhaps you should seek a registration for entertainment services. If you're selling a lot of t-shirts, then that's the way to go. As for books and movies, you cannot obtain a trademark for the single title of a work, so you would not be able to obtain a registration for those goods unless your friend is writing a series of books. 
What Will Happen When You File
We admire your friend for achieving and maintaining a sports record. Alas, that doesn't assure trademark registration for the accompanying nickname. When you apply for federal registration, the examiner will (among other things) check to see if the term is descriptivegeneric or confusingly similar to another competing mark. Usually if the application overcomes these three hurdles, registration is granted. Keep in mind that even if you get a trademark for the nickname, the media can still use the term for editorial purposes -- for example, Sports Illustrated can still refer to other athletes by the nickname. Your registration will only guarantee exclusivity for the goods and services in the class in which you registered.
Trademarks Always Increase Value (NOT!) 
If the record-setting done by your friend is in the past and your friend is no longer well-known, will adding the nickname to merchandise make it more desirable? What's your experience been so far selling merch with the nickname? It's an unfortunate fact that Americans have a short memory (Does anyone remember the most popular actress of the early 40s, nicknamed the "Peek-a-boo Girl"?) 
Filing Your Application
As for using LegalZoom, we must disclaim that the Dear Rich Staff is employed by Nolo, a competitor of LegalZoom that offers a similar program for filing a federal trademark registration. Neither program is necessary for filing -- you can do it yourself at the USPTO and only pay the filing fee. Before using either service, see if you can file by yourself at the USPTO. If that proves too difficult, compare LegalZoom and Nolo to see which offers the most comprehensive help (and post-filing resources). We hope you'll choose Nolo because the Dear Rich Staff devoted considerable effort to providing useful online assistance. Note: No online filing service can guarantee you that the trademark registration will be approved.