To obtain a trademark containing or consisting of a living individual’s name, portrait, or signature, that individual must give written consent. 15 U.S.C. § 1052(c). The United States Patent and Trademark Office (“USPTO”) is currently faced with a novel question of whether individuals can revoke their consent after issuance of a mark.
Luka Doncic is the star guard of the NBA’s Dallas Mavericks. He is also the president and owner of Luka99, Inc., a Delaware corporation that develops and promotes Doncic’s name, identity, and brands. The USPTO has recently rejected Luka99’s trademark applications for marks containing Doncic’s name because his mother, Mirjam Poterbin, owns a trademark registration for the mark “Luka Doncic 7”. Although Doncic previously consented to his mother’s registration of the mark, Doncic has petitioned to cancel Poterbin’s registration at the Trademark Trial and Appeal Board (“TTAB”) because Doncic has retracted his previous consent.
On November 26, 2018, Doncic provided Poterbin written consent to apply for “Luka Doncic” as a trademark, which was subsequently issued on January 7, 2020. At the time of consent, Doncic was 19 years old, had been recently acquired by the Dallas Mavericks, and relied on Poterbin “to provide assistance and guidance for his off-court business opportunities.” Petition at ¶ 4.
Doncic is no longer affiliated or associated with Poterbin, and the USPTO has denied Luka99’s applications for marks containing Doncic’s name based on Poterbin’s “Luka Doncic 7” mark. Luka99 has therefore petitioned the TTAB to cancel the “Luka Doncic 7” mark because: (1) given Doncic’s fame and reputation, the “Luka Doncic 7” mark falsely suggests a connection with Doncic in violation of 15 U.S.C. § 1052(a); (2) in a letter to Poterbin dated July 23, 2021, Doncic specifically and expressly revoked his November 2018 consent so the “Luka Doncic 7” registration violates 15 U.S.C. § 1052(c); and (3) the mark has been abandoned in violation of 15 U.S.C. § 1064(3). Poterbin argues in response that Luka99’s positions are facially wrong because, at the time she registered the “Luka Doncic 7” mark, she had Doncic’s written consent for the mark. Further, Poterbin argues that Luka99 has failed to produce any authority allowing Doncic to unilaterally withdraw his consent after issuance of the “Luka Doncic 7” mark.
If the TTAB sides with Luka99, it would affect future consents under § 1052(c), particularly for individuals considering Name, Image, and Likeness (NIL) deals—these contracts would need to address the potential for unilateral future revocations. In addition to federal trademark rights, the decision could affect an individual’s state-derived rights of privacy and publicity.