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NBA Star Embiid Can’t Register ‘Trust the Process’ Shoe Mark

May 26, 2021, 10:38 PM

NBA star Joel Embiid’s bid to register a “Trust the Process” trademark for shoes was blocked by the fact that a CNBC reality show host already registered it for clothes, the Trademark Trial and Appeal Board said.

The Cameroonian center for the Philadelphia 76ers failed to rebut an examiner’s claim that the identical trademarks for related goods would result in consumer confusion, the TTAB said in a precedential decision.

Marcus Lemonis, CEO of Camping World and host of the business reality show “The Profit,” registered his trademark in 2016.

The board rejected Embiid’s argument that his registered “The Process” trademark for clothes has peacefully coexisted with Lemonis’ trademark for years, suggesting the new mark wouldn’t cause confusion.

“The Process” also has only been registered for two years, leaving it more vulnerable to challenge than a mark five years old or older, it said.

Embiid argued his and Lemonis’ marks convey an entirely different commercial impression. He said he’s a famous basketball player nicknamed “The Process,” and the mark associated with him connotes overcoming difficulties through perseverance. Lemonis’ mark, by contrast, is used on promotional clothing supporting his business advice and television show.

But the board said that didn’t change the fact that nothing in the trademark applications’ respective classes of goods suggests the difference in contextual meaning or limits on each mark’s reach to certain contexts. It also said that although the public may identify “The Process” with Embiid, “Trust the Process” is different.

The TTAB also said nothing in the record supported applying precedents where identical word marks were deemed to have a different commercial opinion. Those cases, it said, featured evidence that the marks had different meanings when applied to specific goods. Embiid failed to show “Trust the Process” meant something different on shoes than clothes, it said.

The board also rejected Embiid’s argument that the goods were sold through entirely different channels of trade. Embiid failed to put any limitations in the application regarding where the goods would be sold, meaning the examiner had to assume they go through “all normal channels” for that type of product, it said.

Embiid has pending trademark applications for “Trust the Process” in other goods, including toys, cell phone cases, and nonalcoholic beverages.

Administrative Trademark Judge Christopher Larkin wrote the opinion, joined by Michael B. Adlin and Christen M. English.

Dinsmore & Shohl LLP represented Joel Embiid.

The case is In re Joel Embiid, TTAB, Serial No. 88202890, 5/26/21.

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Melissa B. Robinson at mrobinson@bloomberglaw.com, Keith Perine at kperine@bloomberglaw.com

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