By Miles McDonald
Did you know that you could own virtually anything as a trademark? From letters and numbers to sounds and colors, U.S trademark law under the Lanham Act[1] allows ownership of almost anything. In the world of American Football, Hall of Fame quarterback Troy Aikman and current Baltimore Ravens quarterback Lamar Jackson are jockeying for ownership over trademarks relating to the number “8.”[2] Troy Aikman holds current ownership of “EIGHT” in relation to beer and other alcoholic beverages, but his ownership of “EIGHT” in relation to apparel and fashion accessory items is hotly opposed by Jackson.[3] While Jackson also owns marks relating the number 8, his marks of “ERA 8,” “ERA 8 BY LAMAR JACKSON,” and “YOU 8 YET?” are more arbitrary and fanciful than Aikman’s.[4] This dispute boils down to two questions: 1) is Aikman’s use of “EIGHT” on various items “likely to cause confusion, or to cause mistake, or to deceive” consumers about the source of the goods,” and 2) does Aikman’s use of “EIGHT” “falsely suggest a connection” between Aikman’s goods and Jackson himself?[5]
The basic requirements for federal trademark ownership under Lanham are: 1) no conflicts with other trademarks 2) trademark distinctiveness 3) use in commerce and 4) the capability to be a source identifier.[6] This framework is broad to allow producers considerable leeway in protecting their trademarks.[7] Here, the important prongs are the first and the fourth: no conflicts with other trademarks and the capability to be the source identifier.[8]
The Trademark Trial and Appeal Board (“TTAB”) will analyze the first question under their “likelihood of confusion” test from Application of E.I. du Pont de Nemours & Co.[9] While this test addresses thirteen different factors, the most important ones for this controversy are “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression” and “the extent of potential confusion” among relevant consumers.
In addressing factor one, the TTAB will likely find that Aikman’s “EIGHT” and Jackson’s “ERA 8” are dissimilar. When considered in their entirety, the mark “EIGHT” does not incorporate all of “ERA 8” into its construction, utilize a “shortened” mark, or simply drop the “descriptive” term from the mark.[11] For factor twelve, the TTAB will likely find that there is de minims potential confusion between the marks because they differ in font, style, shape, and overall appearance; thus, a consumer wanting to purchase Jackson’s backpack with “YOU 8 YET?” is unlikely to mistakenly purchase a backpack sold by Aikman with the “EIGHT” mark.[12]
Jackson’s second argument is made under 15 U.S.C. § 1052(a)—that consumers are likely to confuse Aikman’s “EIGHT” mark with his own because of the vast notoriety, fame, and promotion that Jackson has with his jersey number.[13] This argument will likely fail, as the existence of other “world-renowned athletes wearing the number 8 on their jerseys” complicates Jackson’s claim that use of the number eight suggests only a connection with himself.[14] Cited by Aikman in his response to the opposition, there are many athletes that have famously worn the number eight, such as Kobe Bryant, Yogi Berra, Archie Manning, and Cal Ripken Jr., to name a few.[15] Therefore, allowing Jackson to block some trademarks relating to the jersey number eight would seriously overstate his association with a jersey number worn by several famous American athletes in a wide range of sports.[16]
The TTAB will likely side with Aikman over Jackson and conclude that Jackson’s “ERA 8” and “YOU 8 YET?” are substantially different from Aikman’s “EIGHT.” This would allow both users to simultaneously own their respective marks for goods relating to “apparel and fashion accessory” items.[17] This sort of precedent would aid the competitive marketplace of athletic-consumer goods by forbidding a quasi-monopoly from forming on behalf of an athlete’s popular association with a jersey number.[18] Throughout America, there are thousands of athletes that don the number eight, and a holding on the dissimilarity of Aikman’s and Jackson’s marks will allow athletes of all types to potentially profit off of their athletic likeness.[19]
[1] 15 U.S.C. §§ 1051-1141 (2023).
[2] See Michael Rothstein, Lamar Jackson Disputes Troy Aikman’s Trademark Bid for No. 8, ESPN (Jul. 18, 2024), https://www.espn.com/nfl/story/_/id/40592937/lamar-jackson-troy-aikman-number-8-trademark; ERA 8, Registration No. 97,357,201.
[3] See EIGHT, Registration No. 7,414,301; EIGHT, Registration No. 97,931,214; Lamar Jackson v. FL101, Inc., Opposition No. 91,292,546, https://tsdr.uspto.gov/caseviewer/pdf?caseId=97931214&docIndex=4&searchprefix=sn#docIndex=4 (2024).
[4] See U.S. Trademark Application Serial No. 97357201 (filed Apr. 11, 2022); U.S. Trademark Application Serial No. 88835266 (filed Mar. 16, 2020); YOU 8 YET?, Registration No. 7,301,096.
[5] See Lanham Act, 15 U.S.C. §1052(d); 15 U.S.C. §1052(a); Timothy Geigner, Lamar Jackson, Troy Aikman Fight Over “EIGHT” Trademark, Showing the Absurdity of Modern Trademark, Tech Dirt (Jul. 25, 2024), https://www.techdirt.com/2024/07/25/lamar-jackson-troy-aikman-fight-over-eight-trademark-showing-the-absurdity-of-modern-trademark/.
[6] See Michael Kondoudis, The Four Requirements for a Trademark: AN EASY GUIDE, L. Off. of Michael Kondoudis, https://www.mekiplaw.com/the-four-requirements-for-a-trademark/ (last visited Oct. 27, 2024).
[7] See Michael Rothstein, Lamar Jackson Disputes Troy Aikman’s Trademark Bid for No. 8, ESPN (Jul. 18, 2024), https://www.espn.com/nfl/story/_/id/40592937/lamar-jackson-troy-aikman-number-8-trademark.
[8] See Lamar Jackson v. FL101, Inc., Opposition No. 91292546, https://tsdr.uspto.gov/caseviewer/pdf?caseId=97931214&docIndex=4&searchprefix=sn#docIndex=4 (2024).
[9] Application of E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); See Abe Cohn, Trademark Litigation in the TTAB: The Likelihood of Confusion Test, Cohn Legal PLLC, https://www.cohnlg.com/trademark-litigation-in-the-ttab-the-likelihood-of-confusion-test/; Application of E.I. du Pont de Nemours & Co., 476 F.2d at 1361.
[11] See In re W. Workhorse Mgmt., No. 88008152, at *6 (T.T.A.B. Oct. 16, 2024) (explaining how the marks “CAREER IMAGE” for women’s clothing stores and “CREST CAREER IMAGES” for uniforms including women’s clothing are similar and would be likely to cause confusion).
[12] See id.
[13] See 15 U.S.C. § 1052(a); Jackson v. FL101, Inc., Opposition No. 91292546 https://tsdr.uspto.gov/caseviewer/pdf?caseId=97931214&docIndex=4&searchprefix=sn#docIndex=4 (U.S.P.T.O., filed July 9, 2024).
[14] Jackson v. FL101, Inc., Opposition No. 91292546, at *3, n.1 https://tsdr.uspto.gov/caseviewer/pdf?caseId=97931214&docIndex=2&searchprefix=sn#docIndex=2 (U.S.P.T.O., filed July 9, 2024).
[15] See id.
[16] See id.
[17] Id.
[18] See id.
[19] See id.
