How Many Ways Can You Say Johnny Football?

Johnny Manziel was a highly touted college football player at Texas A&M University– so highly regarded that he won the Heisman Trophy in 2012 and was given the nickname “Johnny Football”. Seems like a pretty big honour considering how many people play football in the US (and presumably at least some of them are named Johnny). His stock dropped somewhat in the year leading up to the 2014 National Football League draft and he ended up being drafted 22nd overall by the Cleveland Browns. (He was later drafted in the 28th round by the San Diego Padres of Major League Baseball and the Harlem Globetrotters , just in case the NFL doesn’t work out. But if he does change sports, he’d better come up with a new nickname - JOHNNY BASEBALL and JOHNNY BASKETBALL are both already taken.)

But from an intellectual property standpoint, the interesting part is what happened when, on the presumption that people recognized him as “the” Johnny Football, he (through his corporation JMAN2 Enterprises) applied to register JOHNNY FOOTBALL as a trademark with the US Patent and Trademark Office (US PTO). He was beaten to the punch by one Kenneth R. Reynolds and his own application was initially refused because of likelihood of confusion with Reynolds’ earlier-filed mark, among other pending marks. However, the Reynolds application was finally refused in March 2014 on the basis that JOHNNY FOOTBALL identifies a living individual, and consent from that individual had not been received (of course). Manziel’s application, which was suspended pending resolution of Reynolds’ application, but appears to have overcome all of the other objections made by the examiner, should therefore proceed to allowance once the deadline for Reynolds to respond to the final refusal passes.

According to the US examiner, “a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods or services because he or she (1) is ‘so well known that the public would reasonably assume [a] connection’ or (2) is ‘publicly connected with the business in which the mark is being used’”. This applies to nicknames as well as first names, surnames and pseudonyms, among others. The Canadian Trademarks Examination Manual informs examiners that they may refuse a mark if “research discloses that the mark consists of the name or surname of a famous individual”. The Examination Manual further specifies that examiners are to be aware of characteristics such as nicknames that the public associates with a particular living person, in ensuring that no applicant adopts a mark that may falsely suggest a connection with that individual. Jurisprudential support includes Carson v. Reynolds, in which the mark HERE’S JOHNNY was refused as suggesting a connection with Johnny Carson ((1980), 49 C.P.R. (2d) 57 (FCTD)). In Spencer-Churchill v. Cohen, the mark SIR WINSTON was found to be “a combination of words by which the late Sir Winston Leonard Spencer Churchill is regularly known and designated”, was therefore primarily merely the name of that individual, and was unregistrable ((1968), 37 Fox Pat. C. 151, 55 C.P.R. 276). It therefore seems that a similar result would be reached in Canada, assuming that enough Canadians (or at least enough trademark examiners) are aware of Manziel’s gridiron prowess.

But in the meantime, JUANITO FÚTBOL was quietly registered by the US PTO for use in association with similar goods, and the mark appears to be in use for college gear including Texas A&M hats and clothing. Arguably, “fútbol” translates as “soccer”, because it lacks “americano” at the end, so perhaps it isn’t quite the same mark, and that may have been what got it through the US PTO, but it certainly gives a similar impression. Is it time for someone to pre-emptively register JEANNOT FOOTBALL (with or without AMÉRICAIN) in Canada?