By: Caldwell

Several months ago, Tom Brady’s management company, TEB CAPITAL MANAGEMENT, INC. (“TEB”), filed trademark applications for the marks TOMPA BAY and TAMPA BRADY.[i] [ii] While the response to the marks on social media was not encouraging, football season makes it the perfect time to check-in on the status of these applications.[iii]

Typically, once a trade mark application is filed at the United States Patent and Trademark Office (“USPTO”),  the USPTO takes three to five months to examine the application and send a response. However, in the cases of TOMPA BAY and TAMPA BRADY, both of which were filed in International Class 025 for “CLOTHING; HEADWEAR; FOOTWEAR” on April 6, 2020, the USPTO issued a response letter (officially called an “office action”) on May 7, 2020 for each of the marks. It is interesting to note that these office actions issued much faster than the typical three to five months.

The first communications from the USPTO usually indicate one of two things:  either that the mark has met the requirements of the USPTO and thus may move on to the next step of the registration process, or that there are issues which need correction before the application can proceed. In the latter case, an Office Action, which can include a first refusal, may issue. First refusals often indicate prior conflicting filings, likelihood of confusion arguments, or other reasons the application is refused from moving to the next step of registration.

The refusals, or office actions, for TOMPA BAY and TAMPA BRADY present similar issues which are very common in trademark practice.

TOMPA BAY Office Action

Looking first at the Office Action for TOMPA BAY, the USPTO Examiner has cited four prior similar applications in the refusal.[iv] Essentially, this means that TOMPA BAY is 5^th in line for registration behind the prior applications. The prior applications listed are U.S. Application Serial Nos. 88854427, 88838383, 88838389 and 88838412. In this case, TEB must either wait for the outcome of the listed prior applications or submit arguments in support of registration by addressing the issue of the potential conflict between applicant TEB’s mark and the marks in the referenced applications.

Serial No. 88854427, TOMPA BAY, was filed March 31, 2020 by an individual in Florida in International Class 025 for “Hats; Shirts”.[v] This application received a refusal which indicated, among other things, that the public would presume a connection between Tom Brady and the mark. In order to overcome this “false connection”, which is prohibited under the Trademark Act, the applicant must respond to a four part test to prove the existence of a false connection.[vi] Additionally, this refusal requires Tom Brady’s written consent to use a mark that appears to identify him, a living individual. On May 11, 2020, instead of filing a direct response to the office action, the individual applicant filed a Request for Express Abandonment, presumably because he realized he could not overcome the connection of the mark to Tom Brady and that it was highly unlikely Brady would give his consent.[vii]

Serial No. 88838383, TOMPA BAY FLORIDA, was filed March 18, 2020 by an individual in Arizona in International Class 025 for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms”.[viii] On May 7, 2020, this application was also issued a first refusal, citing the same reasons and response requirements as Serial No. 88854427 above. [ix] This applicant has not responded to the office action, thus the application is still active. However, if the applicant does not respond within six months of the date of the Office Action, the application will automatically abandon.

Serial No. 88838389, TOMPA BAY, was filed on March 18, 2020 in International Class 025 for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms” by the same individual in Arizona who filed serial no. 88838383.[x] It will come as no surprise that this application was also issued a refusal for the same reasons as serial no. 88838383 above and maintains the same status as that application as well.

Finally, Serial No. 88838412, TOMPA 12, was also filed on March 18, 2020 by the same individual as serial nos. 88838383 and 88838389 in International Class 025 for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.”[xi] This application was also refused on May 7, 2020 for creating a “false connection” as well as lack of permission from Tom Brady, similar to this applicant’s other two applications, serial numbers 88838383 and 88838389. The status of this applications also remains the same as the other two applications; the applicant has not responded to the refusal and if the USPTO does not receive a response in six months from the Office Action date, the application will become abandoned automatically.

Because the listed prior applications to TEB’s TOMPA BAY have essentially weeded themselves out of the running by abandonment (whether express abandonment or the fact that the USTPO is simply not likely to receive a substantive response), this puts TEB’s TOMPA BAY application in the redzone for approval.

However, in order to overcome the refusal completely, TEB must also address an issue in the refusal relating to the description of goods. The examiner is seeking a more specific description of “clothing”.[xii] According to the examiner, the wording “clothing” in the identification of goods is indefinite and must be clarified because it is broad enough to include goods in other classes. TEB must include this clarification in the Office Action response.

TAMPA BRADY Office Action

Looking at the TAMPA BRADY refusal, there appears a familiar consent requirement that is also present in the refusals listed above.[xiii] The difference this time, however, is that this application does in fact identify Tom Brady since it was filed by his management company, and that Brady will, almost certainly, consent that his name be used in connection with this mark.

Another familiar issue appears in the office action for TAMPA BRADY, which is that of a more specific identification of goods for “clothing”.[xiv]

While a request for a more specific identification of goods may be perceived as an easier refusal to respond to, that is not always the case. It is still imperative to consider the strategic implications of a description that might be too specific, and great care must be taken to avoid overlaps. It is not uncommon to have several drafts of a description of goods or services before settling on the version that will be submitted on the trademark application.

As of the writing of this post, TEB has not yet filed a response to the Office Actions issued for TOMPA BAY and TAMPA BRADY.

[i] https://tsdr.uspto.gov/#caseNumber=88861614&caseType=SERIAL_NO&searchType=statusSearch

[ii] https://tsdr.uspto.gov/#caseNumber=88861619&caseType=SERIAL_NO&searchType=statusSearch

[iii] https://www.nbcsports.com/boston/patriots/tom-bradys-new-bucs-trademark-filings-are-getting-destroyed-twitter

[iv] https://tsdr.uspto.gov/documentviewer?caseId=sn88861614&docId=OOA20200507212849#docIndex=1&page=1

[v]https://tsdr.uspto.gov/#caseNumber=88854427&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch

[vi] In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983)

[vii]https://tsdr.uspto.gov/documentviewer?caseId=sn88854427&docId=OOA20200507212747#docIndex=1&page=1

[viii]https://tsdr.uspto.gov/#caseNumber=88838383&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch

[ix]https://tsdr.uspto.gov/documentviewer?caseId=sn88838383&docId=OOA20200507211756#docIndex=0&page=1

[x]https://tsdr.uspto.gov/#caseNumber=88838389+&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch

[xi]https://tsdr.uspto.gov/#caseNumber=88838412&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch

[xii]https://tsdr.uspto.gov/documentviewer?caseId=sn88861614&docId=OOA20200507212849#docIndex=1&page=1

[xiii]https://tsdr.uspto.gov/documentviewer?caseId=sn88861619&docId=OOA20200630210533#docIndex=0&page=1

[xiv]https://tsdr.uspto.gov/documentviewer?caseId=sn88861619&docId=OOA20200630210533#docIndex=3&page=1