March 27, 2012
Joseph J. Stafford
Intellectual Property Attorney
What’s in a Name: Linsanity Off the Court
From Pat Riley’s “Three-Peat,” (U.S. Trademark Reg. No. 1,552,980) describing the quest of the 1989 Los Angeles Lakers for a third NBA championship, to Stacey King’s claims to “Too Big Too Strong Too Fast Too Good,” (U.S. Trademark App. No. 85/261,380) describing Derrick Rose of the Chicago Bulls, basketball has produced some of the more memorable terms and phrases that have been commercialized. These phrases ascend out of last second desperations shots and “posterizing” dunks; however, the effect and significant commercial impact of these phrases can cause ripples beyond the basketball court and can lead to bitter trademark disputes and infringement claims.
The next apparent battle may revolve around “Linsanity.” Linsanity is the term used to express the excitement surrounding the improbable story of Jeremy Lin, an America basketball star of Taiwanese descent who played college basketball at Harvard before being cut by multiple NBA teams on his way to being picked up by the New York Knicks on December 27, 2011. On February 4, 2012, when a series of injuries forced the Knicks to give the young player, who had been living on his brother’s couch, a chance to shine on the big stage, Lin took full advantage and has catapulted into immediate stardom.
In a little over a week, Lin’s story took over New York and the nation. The term “Linsanity” instantly jumped into popularity and widespread usage as numerous t-shirts, hats, duffel bags, towels, and other merchandise widely featured the term. In fact, Nike has already launched its “Linsanity” line of clothes at Foot Locker stores.
In light of the enthusiasm surrounding the young star’s meteoric rise, Tenchin Chang, an individual with no apparent ties to Lin, filed an “intent to use” trademark application (U.S. Trademark App. No. 85/535,650) for “Linsanity” on February 7, 2012. An “intent to use” application allows an applicant to file a trademark application for the mark the applicant intends to use in the future, but is currently not using. An “intent to use” applicant can acquire senior trademark rights once there is actual use in interstate commerce.
In addition, on February 9, 2012, Andrew Slayton, Lin’s high school coach, also filed a trademark application (U.S. Trademark App. No. 85/537,764) for “Linsanity,” as well as registering the domain name www.linsanity.com. Slayton alleges that he has been using the term “Linsanity” to sell sports apparel since 2010. It is important to note that trademark rights ultimately accrue from use, not from registration. The first person to use a mark in interstate commerce has a superior right to the mark.
Shortly after Slayton filed his trademark application, Jeremy Lin himself filed for registration of the mark on February 13, 2012, just nine (9) days after his breakthrough performance. While fairness may demand that Lin be able to own, profit and benefit from the use of a word containing his own name, the law may not be so straightforward. Normally, the Lanham Act denies trademark status to a mark that “consists of or comprises a name … identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c). Therefore, if a term is closely related to a person’s name and another’s use of the mark falsely draws a connection with a public figure, then the applicant must obtain permission from the person before using the trademark.
The instant case presents a different scenario though because “Linsanity” does not directly use Jeremy Lin’s name, but utilizes a derivation of it in an effort to capitalize on the firestorm of popularity and media frenzy that has surrounded the global sensation’s rise. Because it is not a straightforward case, it will be interesting to watch whether the USPTO will grant the registration. The USPTO may very well allow the Chang or Slayton registration despite the use of Lin’s name.
Lin may contest the applications by alleging “likelihood of confusion” between the use of the mark and his name, and also alleging that they were filed as attempts to unfairly profit off his popular name. The ultimate goal for Lin will be to establish that “Linsanity” is closely related to his name and allowing someone else to use it would falsely draw a connection with him. Either way, unless Chang and Slayton decide to give up their priority applications and uses of the term, what started as a heartfelt story on the basketball court may end with the Trademark Trial and Appeal Board, and perhaps even the Federal Circuit.
By: Joseph J. Stafford
Intellectual Property Attorney