What's in a name? A lot, if it's also your trademark

Registering their name, nickname or moniker as a trademark has become a common legal move for celebrities, including sports stars who want to monetise their personal brands and protect the commercial exploitation of their names.

Thanasi Kokkinakis, nicknamed Special K, at Wimbledon last week (pic credit: Mike Frey/BPI/Shutterstock/REX/Shutterstock)
Thanasi Kokkinakis, nicknamed Special K, at Wimbledon last week (pic credit: Mike Frey/BPI/Shutterstock/REX/Shutterstock)

Sports legends such as David Beckham, Mike Tyson, Usain Bolt and Lionel Messi have all registered their names as trademarks.

Rafael Nadal has registered a 'Raging Bull' logo to reflect his Raging Bull nickname. Even Harper Beckham, aged five, has got in on the act.

Generally speaking, the law does not prevent an individual using his or her own name commercially.

However, the position relating to nicknames is less clear.

Using a nickname commercially can result in difficulties, especially where the name or nickname is already registered or has been used publicly by someone else.

The recent dispute between the cereal giant Kellogg’s and Australian tennis player, Thanasi Kokkinakis, over the use of the ‘Special K’ name illustrates the point.

Kellogg’s, which holds the Australian trademark for Special K, wants to stop the 21-year old player from using the term (chosen by the media for Kokkinakis) in an advertising campaign.

In situations such as the Special K dispute, it is easy to make accusations of overly aggressive brand protection against a brand owner but as all brand owners know, the dilution of rights in your brand is a slippery slope which can in the end lead to genericism and an inability to protect your mark (just ask the original owners of the ESCALATOR trademark).

Brand owners have a difficult call to make when their name is being used by someone who is not connected with their business.

It also seems likely, as is the case with many nicknames adopted by the media for sports stars (Tomic the Tank Engine?) that the choice of name was, whether consciously or otherwise, inspired by the original brand. Kokkinakis, on the other hand will no doubt feel aggrieved because the nickname in dispute was not one he had chosen himself - he has simply adopted a name given to him by the media.

There are numerous other examples of nicknames which are problematic for sports starts - Conor McGregor (the UFC lightweight champion), who last year filed an application to register his nickname 'The Notorius' in Ireland, may well encounter difficulties with protecting his mark in the US - the name is already associated there with the late American rapper, The Notorius B.I.G (and forms part of a trademark).

Roger Federer’s nickname 'Fed Express' is also likely to run into difficulties with registration for obvious reasons.

So, what can sports stars do to try to avoid disputes like the Special K dispute?

The answer is most likely to lie in beating the media at their own game. A well advised potential sports star will spend time at the beginning of their sporting careers talking to a branding expert and devising a user-friendly nickname for themselves which can be registered and exploited without difficulty.

This may sound like overkill but it is hard to conceive of many other situations in which a business (and that is of course what a personal brand is) allows others to choose the name they adopt for what can be a hugely valuable brand empire.

Carolyn Pepper is a partner in the media & entertainment team at Reed Smith

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