The Lanham Act bars the registration of similar trademarks (or “marks”) that are likely to cause confusion with existing marks registered with the United States Patent and Trademark Office (“USPTO”). This concept of “likelihood of confusion” is a foundational principal of trademark law and one of the most beneficial aspects of acquiring a federal registration. Federal registration affords trademark owners a host of benefits and nationwide protections. The core function of federal registration is to notify the public that the owner has acquired the exclusive right to use their mark in commerce. The primary benefit of federal registration is the trademark owner’s ability to ward off confusingly similar marks by way of infringement claims, notices of opposition, petitions to cancel, and refusal of registration by the USPTO. When reviewing trademark applications, the USPTO applies the “likelihood of confusion” standard, and often denies registration where another entity has already registered a similar mark. Even when the entity owning the registration is related to the applicant, the USPTO will typically deny registration. This is an issue Travis Kelce currently knows all too well.

Many readers will immediately recognize the name Travis Kelce. But, for the uninitiated, Travis Kelce is a superstar NFL tight end who plays for the Kansas City Chiefs. Kelce is a three-time Super Bowl champion, a nine-time Pro Bowl selection, and a likely future NFL Hall of Fame nominee. Though Kelce has received a lot of media attention for his dominant on-field performance and garnered a reputation as a trendy fashionisto in pop culture, lately his recognition has seen a meteoric rise due to his relationship with the iconic international star, Taylor Swift.

Now, Kelce is once again making headlines with news that he has filed several trademark applications with the USPTO to register "TRAVIS KELCE", "FLIGHT 87", "ALRIGHT NAH", "KILLATRAV", and "KELCE'S KRUNCH". "FLIGHT 87" is a nod to Kelce's jersey number, 87, "ALRIGHT NAH" is his signature catchphrase, and "KILLATRAV" is Kelce's username on Instagram. All three, as well as the trademark for his full name, seek registration for various merchandise and services including hats, hoodies, socks, printed posters, and “personal appearances by a sports celebrity.” In this regard, Kelce is simply one of many public figures that have sought to capitalize on the market value of their name and notoriety. For example:

• The fashion model and television personality Heidi Klum registered her personal name as a trademark;
• Rap performer Curtis J. Jackson, III registered over 20 trademarks in different variations of his stage name "50 Cent";
• The late musician Prince registered a graphic symbol (the Love Symbol), used in lieu of his name, as a trademark;
• Entertainers Beyoncé and Jay Z have an application currently pending with the USPTO to register their daughter's name, Blue Ivy Carter, as a trademark; and
• The socialite Paris Hilton registered the phrase "That's hot", as well as her personal name, as trademarks.

It is far from uncommon to take advantage of a celebrities’ star-power for marketing purposes. For decades companies have used celebrities to endorse their products and services as a proven method for elevating their brand's competitive position. Companies have realized the value of a celebrity’s notoriety, and have successfully appropriated their name and likeness to influence consumer purchasing behavior by increasing consumer brand recognition, and creating positive consumer associations with the brand. A study performed by the Wharton School of the University of Pennsylvania, found that “people are more likely to choose products that are endorsed by a celebrity rather than a non-celebrity, and they make that choice faster. Viewers had less pupil dilation when choosing a product that was advertised with a celebrity, an indication that they were spending less time deliberating their choice and were more confident about their decision.” The Marketing Psychology Behind Celebrity Endorsements.

Additionally, consider the cautionary tale of the legendary artist Prince. In the early 1990s the esteemed artist’s relationship with his record label soured over contractual disputes with his production schedule. Prince wanted to release material as soon as it was ready, and had approximately 500 unreleased songs in his famous studio vault. But Warner Bros. refused, believing it would saturate the market and dilute demand for the artist's music. Later, in a press release Prince stated:

“Warner Bros. took the name, trademarked it, and used it as the main marketing tool to promote all of the music I wrote. The company owns the name Prince and all related music marketed under Prince. I became merely a pawn used to produce more money for Warner Bros."

This dispute over his name and the release of his music prompted him to change his name to the unpronounceable “Love Symbol” and register it as a trademark for himself. Perhaps other rising stars should take heed to Prince’s story and consider, if they don’t capitalize on the market value of their notoriety, it’s very possible that someone or some other brand or company will.

Accordingly, Kelce has made the business decision to take advantage of his notoriety and register his name and other recognizable monikers or slogans as trademarks. While Kelce’s trademark applications are pending, some are already facing registration issues. One in particular is the mark “TRAVIS KELCE”. The application was filed in the name of TMK Enterprises LLC, a business owned by Kelce formed in the state of Ohio. The mark received an initial refusal, on the grounds of likely confusion with the mark “TRAVIS KELCE’S KITCHEN”, owned by Kelce Food Group LLC, another Travis Kelce-owned company formed in the state of Ohio.

One may be thinking, “he owns both companies, so what’s the issue here?” The issue is, Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), requires that registration be refused when an applicant’s mark, as applied to the specified goods or services, so resembles a registered mark as to be likely to cause confusion. In other words, registration of confusingly similar marks to separate legal entities is barred by §2(d). Moreover, examining trademark attorneys at the USPTO are not permitted to investigate the affiliations of the legal entities associated with a trademark application or a previously registered mark.

Obstacles like that identified above may thus arise when an entrepreneur, like Kelce, owns several businesses and wishes to use similar marks, or may arise in situations where a parent company and its subsidiaries produce or provide related goods or services under similar marks. Companies and entrepreneurs alike should therefore take this into consideration when devising their IP strategies across their lines of business.

There is, however, hope for individuals and organizations that find themselves in such a quagmire. The Court of Appeals for the Federal Circuit has held that, where the trademark applicant is related in ownership to a company that owns a registered mark that would otherwise give rise to a likelihood of confusion, the examining attorney must consider whether, in view of all the circumstances, use of the applied for mark by the applicant is likely to confuse the public about the source of the applicant’s goods because of the resemblance of the applicant’s mark to the mark of the other company. See TMEP §1201.07(a). In other words, “a determination must be made as to whether there exists a likelihood of confusion as to source, that is, whether purchasers would believe that particular goods or services emanate from a single source, when in fact those goods or services emanate from more than a single source.” In re Wella A.G. (Fed. Cir. 1986).

In order to trigger the Wella analysis, however, Kelce must affirmatively assert that a §2(d) refusal is inappropriate because TMK Enterprises LLC and Kelce Food Group LLC, while existing as separate legal entities, constitute a single source. Once Kelce has made this assertion, the question then is whether the specific relationship at hand is such that the two entities actually equate to a "single source," so that there is no likelihood of confusion. Therefore, when the applicant and registrant(s) are owned by the same person or entity, it is possible to overcome a §2(d) refusal if the applicant can show a sufficient relatedness of the companies that own the conflicting marks. In many of these situations, an applicant may choose to attempt to overcome a §2(d) refusal by submitting a consent agreement or other conventional evidence to establish no likelihood of confusion.

This assertion alone, however, will not get Kelce out of the pile-on. The existence of a “related company” relationship is not, in itself, a basis for finding that any product emanating from the two companies emanates from the same “source.” Apart from the existence of a legal relationship, there must also be a unity of control over the use of the trademarks. "Control" and "source" are inextricably linked. If each entity independently controls the nature and quality of the goods to which it applies one or more of the various trademarks, the two entities are in fact separate sources. For Kelce, this means there must be evidence to support the assertion that there is a unity of control over TMK Enterprises LLC and Kelce Food Group LLC. In other words Kelce, functioning as the parent-owner of these sibling companies, must show control of the nature and quality of the goods or services in connection with which the marks are used. Kelce would generally provide this assertion in the form of an affidavit or declaration; and if he asserts that he wholly owns, owns substantially all of, or jointly owns the entities and asserts control over the activities of the entities, including the trademarks, and there is no contradictory evidence, the examining attorney should conclude that unity of control is present, that the entities constitute a single source, and that there is no likelihood of confusion under §2(d). And, to everyone’s relief, the mystery of “who owns TRAVIS KELCE” may be solved.

To recap, individuals with some level of notoriety should consider their publicity rights to be potentially lucrative assets which provide companies with a competitive edge. Further, entrepreneurs with multiple businesses and companies with subsidiaries should think proactively about their lines of business as they consider their IP strategies. This may allow them to forecast, if not prevent, some of the obstacles that may arise surrounding trademark registration.

If you do find yourself in the same situation as Travis Kelce, you will have arguments to make that may suffice to overcome the “likelihood of confusion” refusal to register. It should also be noted that the TMEP proffers another means to the same end, which is to simply to assign all relevant registrations to the same party, if applicable. This is an option commonly used to sidestep the related entity issue altogether. To do so, many companies have chosen to create holding companies, often called licensing companies, to bundle all of their IP. In this scenario the holding company would be the owner of the marks and license the trademarks to the related entities. This approach carries with it some legal implications beyond the scope of this article, but it should be noted that “control” remains an essential element in this scenario as well. It’s clear that related entities have several options to sidestep the obstacle of a “likelihood of confusion” refusal. Though the route Kelce will take is uncertain, I’m sure his advisors will draw up the best play to get TRAVIS KELCE into the end zone.

Stites & Harbison, PLLC’s full-service Intellectual Property & Technology Group regularly assists clients in the acquisition, management, licensing, and litigation of patents, copyrights, trademarks, and trade secrets. For questions, comments, or assistance with any intellectual property-related matters, please contact the author or any of the other attorneys in the IPT group.