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Luka Doncic Bid to Get Trademark Back From Mom a Legal Jump Ball

Sept. 19, 2022, 9:10 AM

NBA player Luka Doncic’s trademark dispute against his mother has raised a legal question that appears to have essentially no legal guidance: Can a person referenced in a mark withdraw their consent and cancel the trademark years later?

The Dallas Mavericks’ Slovenian point guard acknowledges his mother had his permission when she registered a “Luka Doncic 7” logo with the US Patent and Trademark Office in 2018, according to a cancellation petition filed this month at the Trademark Trial and Appeal Board. But now that registration stands in the way of his efforts to register his name and a “Luka Doncic 77” logo—he wears 77 for the Mavericks after wearing 7 for a Spanish professional team—as trademarks.

Trademark law prevents registration of trademarks that the public understands to reference a particular person without their consent, as well as marks that suggest a false association with someone. But nothing in the law, PTO guidance, or case law appears to address the question of whether that “consent” and “association” can be revoked, according to trademark law practitioners and academics.

The case could implicate both trademark and contract law, attorneys say, and recent changes to publicity rights restrictions on college athletes have the potential to produce comparable conflicts in the future.

“It’s one of those statutory areas where they didn’t seem to contemplate whether consent could be revoked,” trademark attorney Michael D. Hobbs Jr. of Troutman Pepper Hamilton Sanders LLP said. “I couldn’t find a case where duration of consent has really been litigated.”

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The case of Doncic, who was 19 when the mark was registered, could have interesting implications given the recent explosion of name, image, and likeness contracts signed by college athletes, trademark attorney Virginia Wolk Marino of Crowell & Moring LLP said. Athletes are often guided in such contracts—which can include various publicity rights and trademark issues—by parents or agents, she said.

“You have to think there are going to be issues over whether they are consenting, for someone else to be able to register their name,” Marino said. “If that’s forever, that’s a big deal for a 19, 20-year-old college kid.”

‘Doesn’t Feel Right’

While Doncic was legally an adult when the mark was registered, the cancellation petition notes that he had signed with Real Madrid at 13, made his pro debut at 16, and relied on his mother Mirjam Poterbin to guide his off-court business opportunities. Later, he was drafted into the NBA, became an All-Star, and in the summer of 2021 signed a $207 million contract extension.

Doncic set up Luka99 Inc. and began to pursue business interests of his own—which included applying for three trademarks last summer. But an examiner initially refused to register them because they would cause consumer confusion with the “Luka Doncic 7" mark.

The cancellation petition says Doncic is not affiliated with his mother or any goods and services his mother—who still lives in Ljubljana, Slovenia—provides. It cites abandonment as a cancellation basis, claiming Poterbin isn’t using the mark anywhere in the US. It also cites both Lanham Act Section 2(a), which includes the false association ban, and Section 2(c), which bans marks referencing a living person without consent.

“This is a bizarre case,” trademark attorney Eric T. Fingerhut of Dykema Gossett PLLC said. “I think it’s going to make some law.”

Fingerhut said he’s never seen 2(c) consent revoked, and said whether it’s possible to do so is “the million dollar question.” While conceding a number of legal and factual questions remain unanswered, Fingerhut said he thinks Doncic will prevail.

Marino disagreed, and said “at the end of the day the statute doesn’t provide for a withdrawal of consent.”

“It doesn’t feel right, but that’s what the law says,” Marino said. “It’s just such a weird case screaming for ‘why can’t you just resolve this?’ This case should be settled. It’s his mother.”

‘This is Strange’

The Federal Circuit recently found that a Section 2(c) refusal to register a “Trump Too Small” trademark for referring to former President Donald Trump without permission was unconstitutional on First Amendment grounds. Attorneys said that doesn’t directly apply to Doncic though, since that decision, while it expressed broader concerns over 2(c), didn’t negate the law and involved criticism of the person being referenced.

If the provision is eventually struck down, almost everything barred by 2(c) would also be barred by section 2(a), intellectual property law professor Mary LaFrance of the University of Nevada at Las Vegas said. But she also said she doubts the US Supreme Court would take up the question if the government appealed, meaning the statute likely will remain in play.

Fingerhut and Hobbs said it’s possible the Trademark Trial and Appeal Board finds that consent under 2(c) can be revoked—perhaps even by successors of a deceased person—as nothing clearly indicates otherwise. But Hobbs noted that the five-year renewal of a mark requiring 2(c) permission doesn’t require the referenced-individual to reaffirm consent, and Marino and LaFrance strongly doubted that consent could be revoked.

“Doncic would have to argue the initial consent was invalid,” LaFrance said. “I really do think consent would be determined at the time of registration.”

She also said that while the Section 2(a) bar on false suggestion of a connection doesn’t mention consent, the mark wouldn’t constitute false association even if Doncic disapproved, because the mark “truthfully conveys” he consented in the past.

Hobbs said it’s “theoretically” possible Doncic could lose a 2(c) claim yet win a false association claim, but also had doubts.

“If you consent, how could it be a false association?” Hobbs said. “God, this is strange.”

‘Where’s the Consideration?’

The nature of the agreement between Doncic and his mother could play a significant role in the case, some attorneys said. It’s unclear whether there was any written contract beyond the “Consent to Register” that Doncic signed, broadly approving his mom’s registration and use. Hobbs said that as with bands that have a falling out, that lack of contractual language may leave details like the scope, term, and revocability of any rights intended by the parties uncertain.

Fingerhut and Hobbs both pointed out that a valid contract requires consideration—both parties getting something from the deal.

“I think it’s very different for Luka to give consent to Adidas or his own company than it is to give consent to your mother. Where’s the consideration?” Fingerhut said.

He also pointed out that Poterbin’s registration is less than five years old—making it contestable—which he said should make consent revocable from an equitable standpoint. Incontestable registrations can only be canceled on limited grounds, such as abandonment and fraud.

But LaFrance said the five-year window probably won’t affect the outcome. She also said even if there’s not a valid contract, the principles of promissory estoppel and detrimental reliance could help Poterbin—meaning she undertook cost and effort while relying on Doncic’s consent.

“If consent was given and in effect at the time of the registration, unless the consenting party expressly reserved the right to revoke, it would seem to be some kind of estoppel argument,” LaFrance said “To withdraw after the fact seems to be basically very unfair. My guess is people would be held to the terms of consent.”

Marino agreed allowing revocation would be unfair to trademark owners, but she called contract questions “a bit of a red herring.” She said Poterbin’s abandonment claim may be Doncic’s only way to get trademark rights to his name back, as the statute really only addresses the conditions at that time of registration.

“That’s really all the PTO cares about,” she said.

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

To contact the editors responsible for this story: Adam M. Taylor at ataylor@bloombergindustry.com; Jay-Anne B. Casuga at jcasuga@bloomberglaw.com