Johnny Manziel – Texan A&M football phenom quarterback and Heisman trophy winner – took a t-shirt salesman to court last week to protect his trademark rights to JOHNNY FOOTBALL.
As reported by ESPN, Eric Vaughan was (and apparently still is) selling T-shirts that read “Keep Calm and Johnny Football.” Although the case would be fairly vanilla if Manziel owned the registered mark, Manziel’s mark is still in process with the USPTO. So how can he still sue to stop Vaughan? The answer: common law rights.
Common law rights to a mark automatically attach once the mark is used in commerce, giving the user territorial priority trademark rights even without requiring a certain level of notoriety (not really the case here as most sports fans throughout the country know who Johnny Football is). This earlier use establishes a right of priority even over a earlier filed U.S. application to register a similar mark (assuming no earlier use by that applicant) and as a corollary, allows the prior user to prevent the subsequent user from using the similar mark (with certain exceptions).
Johnny’s right to sue Vaughan is also codified in 15 U.S.C. §1125(a) (Lanham Act §43(a) which allows for suits against people who use “in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which–(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…”
Thus, Johnny is in good shape.