“The previous play is under review.”

San Francisco 49er’s quarterback Colin Kaepernick is the latest on a long list of celebrities and sports figures to turn to trademark law in the effort to protect something believed to be rightfully theirs.

These efforts are sometimes fleeting, and they often bring the ire of fans. However, the reactions are frequently created by internet and media hype generated from legal analysis that is incorrect. What Colin Kaepernick has actually done is apply for a trademark on the standard character phrase “Kaepernicking” for “Clothing, namely shirts.”

The legal intention of this is most likely not to prohibit fans from “Kaepernicking” themselves, or either saying or using the phrase in general.   Rather, Kaepernick is presumably attempting to solidify legal grounds for his own personal business activity profiting off of “clothing, namely shirts” using the term. Applying for a trademark is a basic legal practice for those looking to protect business interests on something proprietary.

A product can be created and made available for sale almost instantaneously using computer tools and sites that perform sales and fulfillment. Celebrities have had their hands practically forced in these issues by the emergence of unscrupulous vendors that rush to create and sell unauthentic products profiting off of their fame.

That would presumably be his intention. The outcome of the actions he is taking is more questionable. The red challenge flag has been thrown.

“Kaepernicking” is his surname turned into a verb.  Appropriate trademark use generally requires the mark to be used as an adjective. That is, to describe a noun representing a product or service. The International Trademark Association describes this by stating “never use a trademark as a verb. Trademarks are products or services, never actions.”

At first glance this does not appear to be a valid trademark because the mark itself is a verb. What difference does that make you might ask?

In other words (pun intended), people use the term “FedEx” to identify the service provided by FedEx for fast reliable delivery.  If you were to say “I was FedExing,” or “please FedEx this box” you are no longer describing a product or service. You are instead stating an action and describing it generically.

There is additional case law pertaining to a trademark that is comprised primarily of a surname, as in the case of Kaepernick. A surname is capable of acting as a trademark as long as it has been used for a sufficient time to gain secondary meaning- which typically is at least 5 years.  Kaepernick may need to have a longer career in the limelight prior to counting his eggs in that basket, as merely adding “ing” to a surname may not be enough to avoid this rule.

However, there was a similar effort last year after Tim Tebow revived the Denver Broncos and “Tebowing” almost broke the internet in the process. According to United States Patent and Trademark Office records, a flood of trademark requests were filed and all of them were initially refused because of a false connection with a living individual. That is, until Tebow’s own company XV Enterprises LLC began filing trademarks. His company has since successfully registered a trademark for “Tebowing” for shirts.

Kaepernick can overcome the connection to the living individual issue by consenting to the trademark. The key, however, is must use the mark to identify his product – shirts.  In the case of Tebow, the word is actually used as a mark on clothing and not merely to describe an action, so it was properly registered as a trademark.

To date, Kaepernick does not seem to be using the term to identify a good.  Initially, it was reported he was simply trying to trademark the act of kissing his muscles after doing something. That is not a trademark usage.

A quick look at the application filed for “Kaepernicking” shows what could be an attempt to take a similar approach to that of Tebow in order to gain ownership of a trademark for the term. It describes showing the term in large letters at the top center of a shirt.

While this would better satisfy the use of the mark in trade, there is a variety of case law that suggests this particular strategy might not be sufficient. When used on merchandise, “the size, location, dominance and significance of the alleged mark as applied to the goods” are all relevant factors to be considered in determining whether it also functions as a trademark[1].

Large lettering across the center of a shirt is most commonly denoted as the design of the shirt. Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and . . . may influence how the [mark] is perceived.[2]

With respect to clothing, consumers have been conditioned to recognize small designs or discrete wording as trademarks if placed, for example, on the pocket or breast area of a shirt; however, consumers typically do not perceive larger designs or slogans as trademarks, especially when such matter is displayed in a different location on the clothing[3].

When it is not perceived as an indicator of the source of production, cases are commonly dismissed due to what is known as ornamental refusal.

It will be up to the real referees at the United States Patent Office to make the final call. However, a closer look suggests that the quarterback may have been sacked on this play.

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[1] ., In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984); see TMEP §1202.03(a)

[2] In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984); see In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982).

[3] See TMEP §1202.03(a), (b), (f)(i), (f)(ii); see, e.g., In re Pro-Line Corp., 28 USPQ2d at 1142 (finding “BLACKER THE COLLEGE SWEETER THE KNOWLEDGE,” centered in large letters across most of the upper half of a shirt, to be a primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d at 1667-68 (finding “SUMO,” used in connection with stylized depictions of sumo wrestlers and displayed in large lettering across the top-center portion of t-shirts and caps, to be an ornamental feature of the goods that does not function as a trademark).