Sunday 28 October 2018 5:20 pm

Legal Q&A: Why has Colin Kaepernick filed a trade mark of his image?


Colin Kaepernick has made headlines over the last two years for protesting against police brutality by kneeling during the US national anthem ahead of an NFL fixture.

The former San Francisco 49ers quarterback has also been in the public eye for fronting an eye-catching Nike campaign.

After gaining such significant exposure for his personal brand it’s not surprising that Kaepernick is now seeking to protect his assets by filing a trade mark in the US for a black and white image of his face and hair.

How common are athlete trade marks?

We are increasingly seeing athletes registering various non-traditional marks – including their likeness, names or catchphrases in an effort to protect their personal brand.

Michael Jordan’s ‘jumping man’ logo and Usain Bolt ‘lightening bolt’ pose are two prominent examples, but image trade marks are nothing new. In 1995 Formula One driver Damon Hill registered a UK trade mark for an image showing his eyes peering out of his visor.

Who controls the Kaepernick brand?

The Kaepernick trade mark application has been submitted by his own company, Inked Flash Inc, who will exploit it by making merchandise and licensing it to sponsors.

There can be issues when athletes don’t own their own trade marks. For example, when Roger Federer switched clothing allegiances to Uniqlo, it emerged that his famous RF logo was held by his former sponsor, Nike. Federer asserted the mark would eventually come to him but if it doesn’t he may be forced to agree a financial settlement.

Why do athletes register trade marks?

Athletes today are far more than players on the pitch. They are brands in themselves and can exploit their public profile for their own gain in many ways.

Registering trade marks is a sensible way of protecting against unauthorised exploitation, but it is also an asset.

Trade marks can also be exploited by heirs after the athlete’s death. For example, Muhammad Ali left very valuable trade marks, such as his name and the catchphrase “floats like a butterfly, stings like a bee”.

How far can a trade mark go?

Smart brands will always seek innovative ways to enhance and defend their rights and commercial strategies, and UK and EU law does in many ways support creativity.

Many athletes register nicknames, like Paul Gascoigne’s Gazza, numbers, like Valentino Rossi’s number 46 and symbols or poses, like Jesse Lingard’s hands forming ‘JL’.

Sensory trade marks have also been becoming more prevalent. Back in 2000, there was famously a European trade mark registered for “the smell of fresh cut grass” for tennis balls.

A recent EU rule change means a graphical representation of a mark is no longer required and signs can be represented in any appropriate form, which could see a rise in non-traditional trade marks.

This could mean that the distinctive motion of a player dunking a basketball or a hologram of someone scoring a touchdown may appear sooner than we think.