Tom Brady’s comments put his ‘Tom Terrific’ trademark quest on shaky legal ground

Brady told reporters on Thursday that does not like the nickname and that he only filed for the trademark to make sure no one else uses it.

Tom Brady Patriots NFL
Tom Brady. –Jonathan Wiggs / The Boston Globe

But in trying to nip the matter in the bud, Brady likely killed his chances of ever getting the right to use “Tom Terrific” to sell merchandise.

Brady told reporters Thursday that he actually “didn’t like the nickname” and only filed for the trademark “to make sure no one used it because some people wanted to use it.”

“I didn’t want people associating me with that [nickname], because that was something I didn’t want to have happen. I don’t like the nickname. I don’t like when people probably give me many nice compliments, certainly that [one],” Brady said. “It wasn’t something I was trying to do out of any disrespect or ill manner or anything like that.”

Here’s the problem with those statements: In filing for the trademark, Brady’s representatives had to declare that they had a bona fide or good faith intent to use “Tom Terrific” for commercial purposes and weren’t simply squatting on the nickname to prevent anyone else from using it, a declaration that was directly contradicted by Brady himself on Thursday.

Brady or his representatives probably aren’t facing any legal jeopardy here, according to Ariel Reinitz, an intellectual property attorney for FisherBroyles in New York who said he couldn’t remember an occasion when the U.S. Patent and Trademark Office pursued such a case.

“There’s no inquiry, no trademark police, to interrogate you and ask” whether you intend to use the trademark for commercial purposes, Reinitz said in a telephone interview Friday, pointing to a section of U.S. trademark law that states “the applicant’s sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith.”

But because “of the very public evidence that’s already out there” – Brady’s comments Thursday about his desire to not use “Tom Terrific” – the trademark is “going to be very, very difficult to enforce. And for that reason, this is not something that can withstand any pressure, any pushback, legally,” Reinitz said.

This could be achieved in two ways, Reinitz said. After a trademark application is approved by the USPTO, it is subject to a 30-day opposition period in which someone could step forward to contest it, in this case citing Brady’s comments that he never planned to use the trademark. Or, alternately, someone could start selling “Tom Terrific” merchandise without Brady’s approval. If Brady challenged this on trademark grounds, the person could point to Brady’s comments and claim that his trademark is invalid because he publicly stated he never intended to use the nickname.

Reinitz said the end result likely will be that the “Tom Terrific” trademark application either will die on the vine in the wake of all the bad publicity it has generated, or face a legal challenge if it is indeed issued. Brady’s team also could file paperwork to withdraw the application.

In any case, Brady seemed more than hopeful Thursday that this matter would simply fade away.

“I was trying to keep people from using it, and then it got spun around to something different than what it was,” he said. “Good lesson learned, and I’ll try to do things a little different in the future.”

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