Luka Dončić wants control of his name under trademark law but someone he knows well is standing in his way is: his mom.
The emerging trademark battle between the Dallas Mavericks star and Mirjam Poterbin is unusual not only because it involves an NBA player and a child versus their parent, but it also raises a rare, and potentially unprecedented, legal controversy where consent to register a mark that references a famous individual is granted and then subsequently revoked.
Last week, Luka77, Inc., a Delaware multimedia company devoted to promoting Dončić’s NIL, petitioned the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to cancel “LUKA DONCIC 7.” The mark belongs to Poterbin, who applied for it in 2018. The USPTO awarded the mark two years later, citing a prior registration in the European Union as a justification.
The mark refers to Dončić’s jersey number on Real Madrid (he wears 77 for the Mavericks), and covers goods and services, including cosmetics, soaps, clothing, games, toys and basketball camps.
Luka77, through its attorneys from Brown Rudnick, says the USPTO “preliminarily refused” to register the company’s 2021 applications for LUKA DONCIC and ORIGINAL HOOPS OF LUKA DONCIC on grounds that they’re too similar to LUKA DONCIC 7 and might spark confusion. A third application concerning LUKA DONCIC for use in charitable fundraising services hasn’t been acted upon.
Luka77 acknowledges that Poterbin filed the original application “with Mr. Dončić’s consent.” Dončić was a 19-year-old NBA rookie at the time, and thus an adult and a professional. He was represented by agents Bill Duffy and Quique Villalobos of BDA Sports Management.
The petition, however, explains that Dončić, a basketball phenom whose parents were accomplished athletes, signed a five-year contract with Real Madrid at the age of 13. Unlike most NBA rookies, Dončić was already a seasoned professional, but because he became famous so young he “not surprisingly … relied on his mother to provide assistance and guidance for his off-court business opportunities.” Poterbin also had business experience, owning a beauty salon in Slovenia and previously working as a professional model.
Dončić, now 23 years old, no longer feels the same. In 2021, he wrote a letter to his mom in which, as Luka77 summarizes, he “specifically and expressly revoked the Consent effective immediately and did not consent to the future use or registration by Registrant, or any other person acting by or on behalf of Registrant, of any trademarks or service marks that contained any indicia of or relating to Mr. Dončić.”
The petition urges the appeal board to cancel LUKA DONCIC 7 for several reasons.
One is that Dončić is no longer “affiliated or associated with [Poterbin] or its goods and services.” He also “does not approve or sponsor [these] goods and services.” This is particularly problematic, Luka77 argues, since consumers are inclined to presume that, given Dončić’s fame and reputation, he is connected to LUKA DONCIC 7, which is “largely comprised of the name that identifies Mr. Dončić.” Luka77 also points out that Poterbin has allegedly “abandoned any and all rights” in the mark by not using it, with no known licensees.
“Guidance on the question of what to do when consent to register a mark that references a famous individual is granted and then subsequently revoked is surprisingly scant,” trademark law expert Alexandra Roberts told Sportico. Roberts, a professor of law and media at Northeastern University School of Law and author of Athlete Trademarks: Names, Nicknames, & Catchphrases in the Oxford University Press’s Handbook of American Sports Law, notes that the Lanham Act and the Trademark Manual of Examining Procedure “are silent on whether consent can be revoked and to what effect.”
She recalls several cases in which consent was never explicitly made “of record,” so the celebrity was able to successfully cancel a registration that referenced them; courts have also canceled registrations where a celebrity granted a license to use their name and that license expired.
“But no case litigated to decision in court or before the TTAB appears to test the precise scenario Dončić now faces,” Roberts said. “Surely, Dončić is not the first and he won’t be the last to consent to the registration of a mark that references him and later change his mind. Roger Federer’s dispute with Nike over the brand’s continued use of a logo comprising his initials after he left Nike for Uniqlo offers one example, but that case was rooted in a separate endorsement contract between the parties.”
Roberts believes the outcome of Luka77’s petition is “difficult to predict with any certainty.” She noted that LUKA DONCIC 7 arguably misleads the public since consumers might presume goods sold under that mark are endorsed by Dončić—which, per his revocation, is no longer the case. Roberts also said, “there are right of publicity concerns embedded in these doctrines as well” and that while Dončić wasn’t a minor when he gave consent, the board will consider that “he was fairly young and inexperienced.” She added that the board can cancel the registration if Dončić establishes his mother isn’t using the mark in commerce in the U.S. and lacks intent to resume any use.
The case could have ramifications far beyond the Dončić family. Roberts said it could create an “important precedent for those children of celebrities who are minors when their parents register their names as marks, agreements which under basic contract principles should be voidable by the minor.”
But she stressed that the law might technically be on Poterbin’s side.
“All that the Lanham Act and the TMEP seem to require is consent at the time of registration,” Roberts said, “so it’s very possible that the Board will not find sufficient basis to cancel.”
If Poterbin wins, it would impact the world of NIL. Such a decision, Roberts said, “may have ramifications for college athletes, who should proceed with caution if a company they endorse seeks their consent to register marks that reference them and understand that consent could permanently jeopardize their ability to use their name, nickname, or likeness as a mark if it creates a likelihood of confusion with other marks that reference them.”
Poterbin has until Oct. 17 to answer the petition and refute her son’s claims. With any luck, the whole thing will be cleared up by Mother’s Day.