A DISCUSSION OF LAW AND JOURNALISM

Will The Flying Squirrel Lose Her Title?

By Will Bartholomew

Gymnast Gabby Douglas captivated the nation during this summer’s Olympic Games as a member of the American team that won the all-around gold medal, and by becoming the first woman of color — from any country — to win gold in the individual all-around competition. She is known as “The Flying Squirrel,” a moniker that will likely pay dividends down the road by giving her a distinctive brand to lend to everything from causes to merchandise. Before this can happen, though, Ms. Douglas will have to vault at least one more obstacle.

On August 6, Fordham University business student A.J. Rotonde filed to trademark the term “The Flying Squirrel” with the U.S. Patent and Trademark Office (USPTO), hoping to cash in by selling t-shirts and other athletic apparel featuring the phrase. Ms. Douglas has not filed her own application to trademark the term.

Does Mr. Rotonde’s filing of the trademark claim mean that he, and not Ms. Douglas, will reap the financial reward from Ms. Douglas’s “Flying Squirrel” fame?  The media didn’t say. We investigate.

Under U.S. trademark law, Mr. Rotonde has the right to try to trademark the term even if he has not yet used it. Anyone seeking to trademark a term can file an “intent to use” application with the USPTO that identifies the term and states how the applicant intends to use it. The applicant then has six months to prove that he has used the trademark in the manner he said he would.

Mr. Rotonde does not have an open path to these rights though, because Sections 2(a) and 2(c) of the Trademark Act give the Patent and Trademark Office the power to reject trademark applications from people who seek to trademark terms associated with celebrities without these celebrities‘ authorization.  Section 2(a) blocks the trademarking of any terms that “falsely suggest a connection” with someone else. Section 2(c) prohibits the trademarking of terms that, without the someone else’s permission, include that someone else’s name.

Earlier this year, the USPTO relied on these provisions to reject several applicants seeking to trademark “Linsanity,” the term made famous by Jeremy Lin as he strung together several outstanding performances for the New York Knicks. As “Linsanity” swept the nation, several people, including one of Mr. Lin’s high school coaches, filed to trademark the term. The USPTO eventually rejected these applicants under Sections 2(a) and 2(c), granting Mr. Lin exclusive rights to the term — even though other applicants filed for the trademark before he did.

Last January 7, powerhouse couple Beyoncé and Jay-Z were basking in the glow of their newborn baby girl , and weren’t thinking about trademarks – but trademark opportunists were.  Shortly after the arrival of Blue Ivy Carter two efforts were made to trademark versions of the newborn’s name. First, fashion designer Joseph Mbeh filed to trademark the term “Blue Ivy Carter NYC.” And one week later, New York clothing company CBH By Benton filed to trademark “Blue Ivy Carter Glory IV” for use in marketing perfume. Beyoncé and Jay-Z did not file for trademark protection of “Blue Ivy Carter” until January 26. But the USPTO rejected both Mr. Mbeh’s and CBH’s applications under Sections 2(a) and 2(c) of the Trademark Act because – well, if you’ve been paying attention, you’ll understand. (If not, wake up. And read the first part of this article again).

Mr. and Mrs. Carter are not likely to be granted full trademark rights to the name, though; trademark law includes a “prior use” exception that allows entities to continue using a term they started using before it gained notoriety. Turns out a retail store in Sturgeon Bay, Wisconsin and an event-planning company in Boston began using the term “Blue Ivy” before Beyoncé became a mom, and both will likely be granted trademark rights to continue using the term the way they had been before the baby’s birth. But they will not be able to use the name in any way that suggests a connection to the princess of hip hop.

Trademark rights to “The Flying Squirrel” will likely end up in the hands of Ms. Douglas, the person associated with the term. Although “The Flying Squirrel” does not contain a part of Ms. Douglas’s name, disqualifying her from asserting rights under Section 2(c), she has a strong case under Section 2(a), which prevents trademarking of a term that “falsely suggests a connection” with someone, regardless of whether the term contains part of that someone’s name. After Ms. Douglas’s historic, stunning, and highly publicized performance at the Olympics, the public so connects her with the term “The Flying Squirrel” that use of that term by any other party, especially to promote athletic apparel, would falsely suggest her endorsement. And (we’re willing to bet) because Mr. Rotonde filed to trademark the term only after it became widely popular during the Olympics, he is unlikely to be able to show prior use and retain any rights on that basis.

If Ms. Douglas does file an application to trademark “The Flying Squirrel,” and we expect she will, Mr. Rotonde will have to find another way to put his business studies to work.

UPDATE, October 22, 2012: Ivy Blue Carter’s parents, Beyonce and Jay-Z, were unsuccessful in trademarking her name.

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