When Darren Heitner launched Heitner Legal six years ago, the Florida-based attorney knew the market for sports legal services lacked a key player: a law firm that offers expertise in athletes’ intellectual property rights.
Over the past decade, Heitner, 35, says he has “witnessed athletes become more cognizant of the value attached to building and protecting their individualized brands.” One was Marshawn Lynch, whose Beast Mode trademark sparked a lucrative clothing brand in the early-to-mid 2010s.
“I remember reading that Lynch was earning mid-six figures a year in licensing income and was expanding his IP protection beyond apparel into sunglasses and cleats,” Heitner recalls. “I saw an opportunity to help likeminded athletes protect their brands, exploit such brands for commercial gain and prevent others from taking advantage of the brands that they chose to build.”
The opportunity soon led to LeGarrette Blount hiring Heitner to secure the trademark “Blount Force Trauma” for T-shirts. Draymond Green would do the same for his line of “Money Green” sweaters, sweatpants and tees. Heitner’s sports clients have also included Johnny Manziel (“COMEBACKSZN”), JuJu Smith-Schuster (“IT’S LITTY”) and Braxton Miller (“CHARG1NG”). He has submitted over 600 trademark applications.
“Many athletes,” Heitner says, “are genuinely interested in educating themselves about how to grow their brand and how to protect it.”
To that point, Heitner advises athletes that registering a trademark “can be quite complex depending on the specific facts and circumstances that surround the given application(s).” From start to finish, registration can take more than a year. It involves drafting an application and regularly interacting with the U.S. Patent and Trademark Office, which assigns an examining attorney to scrutinize whether there is a conflict with an existing trademark. If there is a likelihood of confusion with a mark that is either already registered or pending, the examining attorney can balk.
Meanwhile, there are potential objectors—those who contend their business or commercial interests would be harmed by registration. Objections set off a trial-like process involving the Trademark Trial and Appeal Board, an administrative court within the USPTO.
Heitner recalls having “a lot of back and forth” with an examining attorney on behalf of broadcaster Bill Raftery. The former Seton Hall coach had hired Heitner to secure protection for his signature catchphrase “onions.” When the examining attorney insisted that “onions” could be confused with The Onion website, Heitner persuaded the attorney that there would be no confusion, particularly since one was about satire and the other concerned the celebration of basketball. A year later the mark was registered to Raftery for use in commentary of live performances by college basketball players.
Like others, athletes sometimes assume they don’t need to register a mark. Additional sources of law can block attempts to steal a logo, design or slogan. However, registration provides key protections, including a presumption of ownership and the exclusive right to use a mark. Registration also makes it possible to receive higher monetary damages in a successful litigation and helps to procure assistance from U.S. Customs and Border Protection on stopping counterfeits before they reach American consumers.
Heitner maintains that most trademark disputes “are resolved by way of a strong demand letter” and don’t require commencement of formal litigation.
Yet some disputes necessitate legal action and negotiation. Heitner recalls initiating an opposition on behalf of Fred VanVleet against an individual who registered “bet on yourself.” Heitner stresses that the Toronto Raptors star, with his agent’s help, “came up with the phrase when he went undrafted at the 2016 NBA Draft and has lived by those words ever since, ultimately building a brand around them.” VanVleet’s “brand” includes selling T-shirts, caps, windbreakers, shorts, wristbands, flight packs and bobbleheads, and Heitner argued “there was a likelihood of confusion” if another party was allowed to use the phrase. The matter was ultimately resolved through a settlement.
Heitner advises athletes to recognize the importance of intellectual property as soon as possible. Lack of awareness about IP rights “is a problem that tends to occur early in an athlete’s career rather than later—a young athlete signs a major deal and doesn’t do the necessary footwork to protect their IP.” Heitner highlights Kawhi Leonard’s recent dispute with Nike over who “owns” the Klaw logo. Leonard had contractually assigned his IP rights to Nike, which proved crucial in Nike prevailing.
“I often try to compare IP to real property,” Heitner says. “Would you just give away your right to the land in which you live?”
The importance of trademark law will only grow over this decade, says Heitner, who believes college athletes will eventually be able to capitalize on their name, image and likeness. He played an instrumental role in the passage of Florida’s NIL statute, which goes into effect next July. “There could be opportunities to use and register trademarks while in school,” Heitner says, including when athletes create marketable logos or designs.
Heitner also stresses the crucial role of trademark law in the “advent of new technologies,” adding that he’s “had a lot of clients” interested in Amazon Brand Registry, which requires (among other things) an active registered trademark or a pending trademark application through Amazon’s IP Accelerator service. As more athletes turn to direct sales—trademark registration could prove increasingly vital.