Johnny Manziel, also known as “Johnny Football,” has not yet taken a National Football League regular season snap. However, that has not stopped the Heisman Trophy winner from filing applications in an effort to seek federal trademark protection over a variety of phrases. Of course, “Johnny Football” is one of the many phrases that Manziel wishes to register. However, as ESPN Sports Business reporter Darren Rovell points out, it is just one of ten marks Manziel seeks to get registered, with the latest application filed to protect the phrase “Johnny Cleveland.”
Manziel has employed a tactic that is quite common in the realm of trademark protection — incorporate a separate entity to hold all intellectual property rights. He set up JMan2 Enterprises LLC for that specific purpose, which is the entity that has been listed as the owner of all of the trademark registrations that Johnny Football currently seeks.
While many observers may be led to believe that a simple filing of a trademark application is sufficient to grant Manziel (through his intellectual property rights holding company) federal protection, such a belief would be extremely misguided. In fact, such protection, which comes with a bevy of benefits including but not limited to putting the public on notice of a claim of ownership of the marks as well as the important ability to bring a legal action concerning the marks in federal court (and potentially collect heightened statutory damages against infringing actors), is not always easily attainable.
Johnny Manziel has not yet received a single federal registration for any of the ten trademark applications his JMan2 Enterprises LLC has filed.
The marks that Manziel currently seeks to protect are as follows:
- JOHNNY CLEVELAND
- THE HOUSE THAT JOHNNY BUILT
- JOHNNY FOOTBALL
The first question one may ask is why Manziel has separate applications for two of the marks listed (MANZIIEL and JIIM). The explanation is that he seeks protection for both the word mark and a separate design mark with regard to those particular trademarks. The broadest protection for an applicant is typically in association with a registration for a word mark (also referred to as being in standard character format), which encompasses use in practically any manner of presentation. Applicants will commonly file applications to protect design marks (also referred to as being in stylized format) if there is a particular stylized appearance of the mark that the applicant seeks to protect.
So what is taking so long for Manziel to be awarded federal registrations for the applied-for trademarks? Every single application (ten in total) is currently pending at the U.S. Patent and Trademark Office (USPTO) with a 1B filing designation attached. A 1B filing basis means that the applicant intends to use the mark on all the goods and/or services listed in the application, but has yet to use the mark in commerce. Importantly, a USPTO examining attorney will not push a trademark application through to eventual registration until the applicant demonstrates that the mark is being used in commerce and adequately shifts the filing to what is considered a 1A basis. Manziel has yet to move to that important step in the process for any one of his ten pending trademark applications.
The most valuable trademark for Manziel to receive federal trademark registration will undoubtedly be “Johnny Football.” Interestingly, it is the only mark out of all ten pending applications that was originally filed on a 1A (“actual use”) basis. However, it has since been shifted to an intent-to-use filing basis. Manziel and his company initially filed the “Johnny Football” application on February 2, 2013. Roughly a year-and-a-half later, the application’s history provides some insight on the struggles facing Manziel separate from proving actual use in commerce.
On December 31, 2013, the USPTO examining attorney assigned to Manziel’s “Johnny Football” application issued a suspension letter. It remains the last document exchanged between applicant and examining attorney in this particular file. The suspension letter indicates that the examining attorney has suspended action on the application because pending applications filed by third parties pre-date the filing date of Manziel’s “Johnny Football” application. The suspension shall last until the other four applications referenced by the examining attorney are either registered or abandoned. The four applications are for: (1) Johnny Football; (2) Johnny Basketball; (3) Johnny Baseball; and (4) Juanito Futbol (which has already been granted federal registration).
While the suspension remains in place, it is likely to be removed at some point in the future. The most concerning pre-existing application would be for the identical “Johnny Football” application (bearing a Serial number of 85769563). However, a March 20, 2014 Office Action disseminated by the USPTO examining attorney attached to that particular filing issued a Final Action determining that the mark identifies a particular living individual (i.e. Johnny Manziel). It was thus rejected. The applicant has not filed any response to the Office Action.
Manziel should seek an update from the examining attorney attached to his “Johnny Football” application and demand that the suspension be removed. Thereafter, he must prove use of the mark in commerce, shift his application to a 1A filing basis and before long he should be able to stake his claim to his very first trademark registration (of the ten currently pending).
Darren Heitner is the Founder of Heitner Legal, P.L.L.C., which specializes in business transactions and litigation as well as a variety of intellectual property matters, including but not limited to trademarks, copyrights and right of publicity.