With college athletes able to profit off their name, image, and likeness (NIL), many have turned to creating and building their own brands. Building a brand can come with the use of a trade name and a personalized logo, specific to the student-athlete. Utilizing a brand name and logo can potentially expose a student-athlete to legal liability. Student-athletes should work to ensure that their NIL activities do not infringe on any others’ intellectual property rights, including the intellectual property rights of their university.
There are countless registered and unregistered trademarks that a student-athlete could potentially infringe upon. It is important for student-athletes and their representatives to be proactive in order to protect against trademark infringement liability. Understanding that specific names and logo designs may need to be altered to avoid liability is important. There are multiple steps student-athletes and their attorneys can take in order to avoid infringing on the intellectual property of others.
Trademark rights and protection are codified under the Lanham Act. A person or business can be found liable for trademark infringement under the Act if: (1) they use any reproduction, counterfeit, copy, or imitation of a mark; (2) without the registrant’s consent; (3) in commerce; (4) in the connection with a sale, offering for sale, or advertising of any goods; (5) where such use is likely to cause confusion, or to cause mistake or to deceive. Essentially, student-athletes and their representatives need to make sure that their trade name or logo is not substantially similar to another trademark that it will cause a likelihood of confusion to consumers. Courts will look to see if the potentially infringing mark has the effect of appearing as if the registered mark owner approved or licensed the new mark to use its design.
In a trademark infringement case, courts will use specific factors to determine where a claimed infringing mark would likely confuse consumers with an already registered mark. Student-athletes can be mindful that each federal circuit court has its own set of factors, even though many overlap. Depending on the location of the alleged infringement, different factors may apply. A few common factors courts will use are: (1) the strength of the plaintiff’s mark; (2) similarity of design between the marks; (3) similarity of the products; (4) identity of retail outlets and purchasers; (5) similarity of advertising media used; (6) the defendant’s intent; (7) actual confusion; and (8) degree of care exercised by potential purchasers. Courts will weigh each factor in favor of one party or the other. While no one factor can prove infringement, a majority is not needed to show infringement as well. Courts will decide on a case-by-case basis, under the case’s specific facts, to determine if a claimed infringing mark would likely cause confusion.
There are multiple steps student-athletes can take to ensure their new trade names and logos are not infringing upon a registered mark. First, student-athletes need to make sure their new brand name and logo are unique and distinct from existing names or logos. In addition to conducting some trademark research and due diligence, student-athletes should ensure they are not copying or imitating any design elements of well-known brands.
Second, student-athletes and their representatives need to be aware of the potential products they may be using their brand name and logo on when designing them. Student-athletes should research what other logos and trademarks are commonly used on the same products that the student-athlete wishes to sell. They should also be aware of where these products will actually be sold. If they appear in stores where other similar marks are sold, infringement is more likely. If student-athletes are able to ensure their products are sold online or through personalized streams of commerce, there will be less likelihood that consumers would get their products confused with others.
Third, student-athletes and their representatives should research the likelihood that their new design could be confusing with an already existing design. This could be done by using surveys to ask potential customers if they find any confusion between the student-athletes mark and the already registered mark. Student-athletes and their representation should also research their potential markets, both in a geographical sense and a product category sense, of any existing registered marks that appear similar to the design of the student-athletes’ new mark.
Overall, there are multiple steps student-athletes and their agents or attorneys can take in order to ensure they are not liable for trademark infringement. With the NIL market continuing to grow, more student-athletes will be entering the NIL space and creating businesses, trade names and logos. If a student-athlete is working to build their brand, they should strongly consider how intellectual property may affect their NIL activities.
By Paul Kekich
Paul Kekich is a Sports Law Intern at Frieser Legal and a second-year law student at Marquette University law school where he is pursuing his J.D. with a focus on sports law and intellectual property law. Paul’s studies are focused on a potential future of working in collegiate sports, as well as identifying new and emerging issues that affect college athletes.
