American footballer Travis Kelce was already famous as a championship-winning athlete, but that was nothing compared to the fame that awaited him as Taylor Swift’s boyfriend. Within 24 hours of Swift’s appearance at Kelce’s ball game, his followers count increased by 300,000 and his jersey sales spiked 400 percent.
Correlation does not equal causation, but it is clear that Kelce is looking at levels of attention that he’s never seen before. Wasting no time in the limelight, Kelce’s company TMK Enterprises LLC lodged applications to register six trade marks in the United States on 30 October 2023.
The marks include the words KILLATRAV, TRAVIS KELCE, TRU KOLORS and KELCE’S KRUNCH. The other two are FLIGHT 87, a brand associated with his jersey number, and ALRIGHT NAH, a variant of “alright now” that he has come to use frequently in his media appearances. The marks are in respect of jewellery (such as lapel pins and time devices), clothing (such as sweat pants, hoodies and hats), posters, bobblehead dolls, and – yes – T-shirts.
The episode highlights the “kill or be killed” approach to monetising fame by trade mark law. Those enjoying their 15 seconds are putting serious thought into ensuring they (and sometimes only they) can monetise attention on them by applying for a monopoly on use of their name or key phrases associated with them in relation to products.
Of course, fame is as old as media. But online media spreads at a furious speed, and those seeking attention have to jostle for it. Truth often struggles to keep up. By the time everyone realises a product is not actually associated with the famous individual, that counterfeit may have already cashed in big. This makes marks and protection even more important in today’s interconnected world.
Although Kelce filed these applications in the United States and is unlikely to be thinking about the Australian market anytime soon, it is useful to think about why he would be registering these marks from the Australian perspective.
An offensive line: I knew you were trouble when you walked in
A famous individual registering trade marks will often want to be preventing others from using marks that are “substantially identical” with or “deceptively similar” to the celebrity’s mark. They are well-known amongst consumers, and want to prevent anyone else trying to ride the coat tails of their (sometimes) hard earned fame.
They specifically want to prevent consumers from being under an impression that a stranger’s good or service is associated with them.
Another athlete, Lebron James, exemplifies this point. His IP company, LBJ Trademarks LLC, owns the Australian-registered trade mark LEBRON. On 21 February 2021, individuals tried to register the trade mark LES BRONS for apparel (class 25). James’ company LBJ Trademarks LLC filed a Notice of Intention to Defend. It argued that pursuant to section 52 of the Trade Marks Act 1995 (Cth), the LES BRONS mark infringed the LEBRON trade mark because they sounded similar.
The Delegate agreed. On 10 August 2023, they found that the ground of opposition was established and refused to register the application. The problem, according to the Delegate, was that even though they are spelled differently, a “significant portion” of consumers would think that LES BRONS is French and therefore pronounced “lay-bron”. This was aurally similar to “Lebron”. There was a real risk that consumers would have cause to wonder whether branded goods come from the same source.
Registering a trade mark for a name therefore creates significant rights associated with preventing others from capitalising on word or sound associations with a famous name or remark.
Once registered, only limited circumstances exist to allow others to use that mark in respect of the same or similar goods. That might be where they use their own name, in good faith, or an honest description of what a product is.
If Kelce successfully registers the marks, he can prevent others from trying to ride the wave of attention that he is receiving and cash in on his reputation. (That the wave exists because of his association with someone else much more famous isn’t the point).
A defensive tackle: I’m the problem, it’s me
On the other hand, a trade mark might also be a “shield”. This is particularly where a market is crowded by a term that is relatively descriptive. If registered, none of the other users can easily alleged infringement, while it also gives a clear date by which use was firmly established.
While a celebrity might have a reputation, that is usually for their athletic prowess or singing abilities and not for products such as clothes.
The decision to lodge an application for TRAVIS KELCE, in particular, is interesting.
In Australia, individuals can use the name they are known by in good faith as a trade mark for their good or service without the benefit of registration and without infringing another trade mark. However, their companies cannot and these are usually the vehicles trading in goods and services. Sydney fashion designer, Katie Perry, had a registered trade mark KATIE PERRY. She alleged infringement by the singer and her company by trading in clothes as part of the singer’s concert tour. In April 2023, Markovic J found that while Katy Perry (the singer) could use the name she is known by, her companies could not use that name.
Kelce’s application for the catchphrase ALRIGHT NAH also raises interesting questions. In Australia, there is a strong chance that this phrase would be too common and registrable for monopoly of use.
However, YouTube’s most subscribed individual and mega-celebrity MrBeast shows why Kelce is smart to try and register this phrase now while he is popularising it. MrBeast sells chocolate bars called Deez Nuts, but without a trade mark, he ran into trouble. Dee’s Nuts, a longstanding confectionary company with a registered trade mark, has recently sued MrBeast for his use of the mark Deez Nuts on his chocolate bars. Had MrBeast gone into the market with a trade mark, he might have had a full defence to this lawsuit. And have saved himself considerable legal fees and (likely) rebranding costs.
Trade marks: a nightmare dressed like a daydream
Taylor Swift reportedly has over fifty US-registered trade marks and her team is scrupulous in ensuring that her name, initials, signatures, album names, song titles and concert tour names are protected in some way by trade mark law. She knows that being famous is sometimes not enough, especially if you want near exclusive rights to use it for commerce.
As Katy Perry found out, people or companies (often by coincidence) trade in similar sounding goods. The earlier the better for planting your flag on the use of a name or phrase.
The Swifts and Perrys aside, most celebrities know that fame is fickle. Announcing himself as one of the “wise men” of business, Kelce joins an increasing number of celebrities that are trying to monetise their internationally recognisable profile while it lasts.
Registering the right trade mark is an integral part of that process, but as the cases above show, although it might look simple there are pitfalls to it that can get expensive if fallen into. Obtaining proper legal advice and doing it right the first time is key to obtaining maximum protection.
Or, as a wise person once said: devils roll the dice, angels roll their eyes.