Luka Doncic’s Trademark Dispute With His Mother Settles

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from the mama-mia dept

Over the summer, we discussed what looked to be a fascinating trademark dispute between NBA superstar Luka Doncic and his mother, Mirjam Poterbin. As a quick summary, Doncic consented to have trademarks referring to him registered to his mother, as he’d become a star overseas at age 13. That itself isn’t all that odd. But now Doncic has his own company managing his name and likeness rights, Luka77, which applied for trademarks at Doncic’s request, only to have them refused as being too similar to the marks held by Poterbin. From there, Luka77 petitioned the USPTO to cancel Poterbin’s marks, with Doncic asserting he no longer wanted his mother to control them.

As I stated in that original post, the most interesting question was whether Doncic could even rescind the permission he gave his mother on the trademarks she still has in the first place. This was from trademark guru and professor Alexandra Roberts.

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 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.

Sadly, for my purposes, the open questions on how this would all work as a matter of the law will remain unanswered for now. Doncic has reportedly ended the conflict and rescinded the petition to cancel Potermin’s mark, having amicably settled the dispute with his mother.

As reported by The Dallas Morning News, the two sides have resolved the conflict. According to USPTO’s official website, Doncic terminated the petition on December 5th. 

Unsurprisingly, neither side is talking about any details within the settlement agreement. While that’s the norm with settlements like this, it also makes the question about how this would all work completely uncharted territory.

But the question will get answered some day. With more and more athletes doing name and likeness (NAL) deals at younger and younger ages, this won’t be some unique, one-off situation in perpetuity. Especially when you consider the NAL rights that NCAA players have suddenly been granted, you better believe likeness deals by minors will continue to be a thing and will be managed by the adults in their lives.

Filed Under: luka doncic, luka77, mirjam poterbin, trademark



Source
Las Vegas News Magazine

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