Ask the Concierge

Dear The Concierge,
On the MTV reality show Two-A-Days there was a football player named Dwarn Smith Jr. His father, also Dwarn, goes by the name Pete. Dwarn Jr. is called Repete. Pat Riley has a legal trademark on the term “threepeat” and can demand financial remuneration for any infringement. If Dwarn Jr. were to have a son who became an NFL player and was called threepete, would he be infringing on Riley’s trademark if he marketed himself as Threepete? Would this be different if Threepete were his given name, as opposed to a nickname?

Thanks
Stupid Name
Hoover Alabama


Mr. Name,

Riles & Company, Inc. owns several marks for Three-peat - a couple are still alive.
But I don't see a registered trademark mark for "Threepete" that is live.

If Riley is using it to market goods or services, another's use of the word threepete is not an infringement unless it is used to market similar goods or services and would likely confuse the consumer as to the source of the goods.

The issue of whether one can use his own name in connection with the sale of goods is more of a gray area. The fact that it is a nickname may or may not make it less likely to be able to use it if you are provding a good or service similar to those provided by the trademark owner (I would argue that the person would be less likely to use it). I would say that as long it is not used in a confusing manner it is ok. A reasonable settlement of the case should say the same thing and proscribe how it can be used. One interesting trademark case that I think settled out of court involves the use of the name 'Seymore Butts' - This name was created by Adam Glaser but technically it was the property of a film company that owned the rights to the nickname. Glaser opened his own distribution company and sought to use the name on his own - although this case had contractual issues-Glaser argued that he needed this name to adequately descibe the product and to indicate the source of his product.

The test is whether it is likely to confuse the consumer. I would not advise a client that threepete for tshirts was ok if someone else was using threepeat for tshirts.