By Evelyn Li
New York Knicks’ rising star Jeremy Lin has filed a trademark application with the United States Patent and Trademark Office for the term “Linsanity” on Feb. 13th, 2012. Three different fillings under the same term came to the agency before Lin acted on claiming his IP rights. Yenchin Chang, one of two California applicants who works as an importer/exporter, has paid the $1,625 filing fee to use the phrase on sports apparel so that he could “be a part of the excitement.” The other California applicant, Slayton, purchased the domain name http://www.linsanity.com. None of those three applicants have any ties to Jeremy Lin.
15 USC §1052 (c), states that no trademark shall be refused registration unless it “Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature.” Also, in determining whether a particular living individual with that “name” would be associated with the mark, the TTAB must consider: “(1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” Given the popularity the term “Linsanity” has gained through media publication and other communicational channels, it would appear that the public is well informed of the indication on the identity of Lin whenever such term is used. Thus, if anyone tries to put “Linsanity” on their product, they would very likely need to obtain Lin’s written consent. However, it is unlikely that Lin will give his consent since he is already applying for the same term for his own trademark.
On the other hand, because these applications are still in the process of trademark examination, they all need to show “use” on the term in identifying the source of their goods. To fulfill the “use” requirement, applicants must provide “one specimen showing use of the mark in commerce for each class of goods/services.” It remains unclear whether the applicants will be able to show such specimens. In addition, if a potential mark is used “solely to identify a character” it is unlikely that the application for registration will be successful. “[P]ersonal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group.” In re Mancino, 219 USPQ 1047 (TTAB 1983). It is arguable whether “Linsanity” qualifies as a source identifier due to the lack of use in all of the applicants’ cases.
Another interesting report from the China Daily, the Chinese government’s official English language newspaper, just made Lin’s case more complicated. According to the report, Minjie Yu, owner of WuxiRisheng Sports Utility Company, has successfully registered the trademark “Jeremy S.H.L.” with the Chinese trademark office in 2010 prior to Jeremy Lin’s rise to fame. The company applied to trademark a variation of Lin’s name, “Lin Shuhao (in Chinese characters) Jeremy S.H.L. (initials of Lin’s Chinese name),” according to the website of the trademark office of China’s State Administration of Industry and Commerce. The application was approved in August, with the company paying just 4,460 Chinese yuan (US$710) for the rights and creating a headache for Lin and his corporate partner Nike, with whom Lin signed a three-year contract in 2010. WuxiRisheng Sports Utility Company is a major manufacturer of sports equipment in China, reportedly producing about one million basketballs, volleyballs, and soccer balls each year. Under the registration of Lin’s name, the company is entitled to use the trademark for sportswear, accessories, balls, and toys until August 2021. According to Chinese trademark law, if Lin wants to use his name as trademark on any goods he wants to sell in China, he will have to obtain WuxiRisheng’s consent.
Under Chapter I Articles 9, 10, and 11 of the Trademark Law of the People’s Republic of China, there are limitations against registering certain types of names and symbols as trademarks. However, there are no clear regulations on whether anyone could register a trademark under the names of celebrities. If anyone wanted to register a celebrity name as trademark, the trademark examiner has relatively broad discretion in granting the application. As a result, celebrities often find it hard to rely on the judgment of those examiners to protect their commercial interests. Thus, the Chinese trademark system makes it relatively easy for other people to profit from celebrities’ names and the protection of trademark interests under celebrity’s names is mostly the burden of the celebrities themselves. In Lin’s case, he could have filed a trademark opposition claim within three months of the publication of the preliminary examination and approval of WuxiRisheng’s trademark under Chapter III, Article 30 of the Trademark Law of People Republic of China. Such a claim would require Lin to present proof that the use of his name as another’s trademark harmed his reputation or confused the related public. However, as the three month period has elapsed, Lin may no longer choose this course of action.
However, there is another way for Lin to bring an action against the company in China. Under Chapter V Article 41 of the Trademark Law of China, Lin may file a request with the Trademark Review and Adjudication Board for adjudication to cancel the registered trademark. Although highly unlikely to succeed, Lin may petition the Board to revoke WuxiRisheng’s trademark by asserting that his name is a “well-known mark” and was registered in bad faith by WuxiRisheng.
Where the Chinese Trademark Law has failed to adequately protect the rights of private persons to trademark their name, courts have introduced principles found in Chinese civil code. When cancelling registered trademarks under celebrities’ names, courts have considered Article 9 of the Chinese Trademark Law together with the rights guaranteed under Article 99 of the General Principles of the Civil Law. Article 9 states that, “the trademark for which an application for registration is filed shall have distinctive characteristics easy to identify, and may not conflict with the legal rights acquired by others in priority.” Under Article 99, “Citizens shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of, or false representation of personal names shall be prohibited.” Thus, Lin could argue that the right to use his personal name existed prior to the WuxiRisheng’s trademark rights. However, Lin would have a difficult time convincing a Chinese court to revoke WuxiRisheng’s trademark under this rationale because the courts rarely uphold the rights of foreign nationals over that of Chinese citizens.
It should be noted that there is no “first to use” doctrine under Chinese trademark law. Instead, China uses the “first to register” doctrine. Therefore, based on the facts of Lin’s case, the Chinese company has a very good chance of prevailing in the Chinese courts.
It is not a new trend in China for businesses to register trademarks under celebrity names, both foreign and domestic. In fact many businesses have been making considerable profit using such names as their trademarks for a long time. For example, most recently, Michael Jordan has brought lawsuit against Fujian Province-based Qiaodan Sports Co. Ltd. for allegedly building its business around his Chinese name and jersey number. Unfortunately the case was thrown out by a court in Beijing. In the court’s decision it stated that Michael Jordan’s Chinese name was “neither distinctive nor unique.” The court found the name “Qiaodan” was a common one, which could refer to any number of people and didn’t specifically refer to the former NBA superstar. Similarly, if Lin were to bring a lawsuit against WuxiRisheng’s registration on his Chinese name, he would most likely be facing the same difficulty in proving that his Chinese name solely indicates him. In addition, the businesswoman who registered Lin’s name has also registered other basketball players’ names based on her judgment of their future potential. As long as she claims that making such registrations is an “entrepreneurial investment”, she should be safe under the current Chinese trademark system.
There is an old saying in China that one should “think twice before acting.” Given the realities of the Chinese trademark system, it appears that Jeremy Lin should think twice before planning to bring a trademark suit in China.