USA Law and Practice Contributed by: Irwin A. Kishner, Daniel A. Etna, Joel Wagman and Barry Werbin, Herrick, Feinstein LLP
was particularly useful as direct taxpayer sup - port for new stadiums and arenas was waning. College athletes are now able to exploit their own name, image and likeness (NIL). This is the result of some new state laws, as well as a change to the National Collegiate Athletic Asso - ciation (NCAA) rules providing collegiate athletes for the first time with the right to profit by licens - ing their NIL rights, all of which will be impacted by significant litigation and settlements that are ongoing. This monumental change for col - lege athletes has raised burgeoning issues and opportunities. (see 5.3 Image Rights and Other IP and 8.1 Women’s Sport Overview ). 5. Intellectual Property, Data and Data Protection 5.1 Trade Marks Trade mark rights in the US are based on the use of a mark (be it text, designs/logo, slogans, or a combination thereof) in US commerce for specific goods/services. Registration is there - fore not necessary to protect and enforce trade mark rights, although registration provides cer - tain meaningful benefits (discussed below) and enhanced litigation remedies. Unregistered but otherwise protectable marks (ie, common law use) may be enforced against junior users of the same or confusingly similar marks for the same or closely related goods/services; however, a junior user who registers its mark first may, over time, establish priority in geographic regions in which the senior use had not been operating at the time of such junior user’s registration. Registration is available at the federal level for marks that are used in US interstate commerce. All 50 states also have state trade mark registra - tions for marks used only within their respective
states. The US is also party to the Madrid Proto - col and accepts WIPO international applications designating the US. Word marks that are generic can never be reg - istered. Marks that are merely descriptive also cannot be registered on the Principal Register or enforced until, and if, they obtain secondary meaning (also known as acquired distinctive - ness). Marks cannot be registered if they are confusingly similar to any prior filed application or issued registration for related goods/services. While registration is not necessary to enforce valid trade mark rights, under the US Trademark Act (also known as the Lanham Act), the advan - tages of federal registration include: • legal presumption of validity of the mark and its ownership; • constructive nationwide notice of registration; • potential for enhanced damages in infringe - ment cases, especially for counterfeit mer - chandise; and • potential senior rights in certain geographic areas as against a senior common law user of the same or confusingly similar unregistered mark in the absence of prior knowledge of the senior user’s use. Changing Controversial Team Names Of significance is the recent trend for sports teams to change their names where the names reflect historical bias or racist content that is offensive to one or more societal groups. 5.2 Copyright/Database Rights US copyright law is exclusively governed by the 1976 Copyright Act, which is a very lengthy and complex statute with additional enabling regulations. The USA is a member of the Berne Convention. Registration is not required to pro -
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