Tracy Jong

In First Pitch Against The USPTO, Hurler Shane Bieber Throws A Ball

The standards to which a professional baseball player achieves immortalization on a baseball card is making it to any level of professional baseball. It might, though, be a little harder for a big leaguer to get a trademark.

After a respectable professional debut in 2018, Shane Bieber was immortalized on various baseball cards in 2019.  One baseball card, though, misnamed Shane as “Justin.”

Making the most of the situation, the singer Justin Bieber and baseball player Shane Bieber exchanged humorous tweets over Twitter acknowledging the baseball card goof.  Shane went further making the most of the error. During Players Weekend, when major leaguers put their nicknames on the back of their jerseys, Shane’s nickname was “Not Justin.”  Given the appeal and response to the card error and player’s weekend nickname, Shane decided he wanted to trademark the “Not Justin” nickname, to cash in the excitement by selling clothing bearing the new nickname.  Shane, with the guidance of a lawyer, filed the “Not Justin” trademark in August 2019.

A Texas based company named Justin Boots has objected to the Shane’s trademark application.  Justin Boots is a western and equestrian boot company who has been around since the late 1800s.  They believe a “Not Justin” brand would confuse customers:

“In view of the similarities between opposer’s marks and applicant’s mark and the fact that applicant’s opposed goods are identical or closely related … there is a likelihood that applicant’s opposed goods will be perceived as being sponsored or affiliated with opposer”.

Justin Bieber, for his part, doesn’t seem confused or offended by the potential “Not Justin” mark as he was seen with a “Not Shane Bieber” jersey while out riding his motorcycle.

While it is highly unlikely that the baseball fan consumers of “Not Justin” baseball shirts would be confused by Shane Bieber’s mark to the Justin Boot brand, he and his lawyer are reviewing the opposition to their filing. If they decide to reply, they will have to present evidence and a legal argument to overcome the objection from Justin Boots. They would argue that the Justin Boots’ boots and “Not Justin” apparel were not sold in the same trade channels and that the consumers of the Justin Boots are sophisticated and know about the product they are buying. It would not be an impulse purchase where a mistake was likely to happen between the brands.  Similarly, customers of the “Not Justin” apparel were aware of the celebrity name mishap and would purchase products to partake in the humor. They would not likely be confused that the apparel was related to a boot company.

I think they might succeed in overcoming the opposition if they choose to proceed. 

Tracy Jong is a patent and trademark attorney at Tracy Jong Law Firm. Tracy focuses her practice on client counseling related to patent and trademark prosecution for a range of clients including small startup companies, restaurants and bars, craft beverage companies and product manufacturers. She may be contacted at TJong@TracyJongLawFirm.com. Connect with her at: Twitter, Facebook, Linkedin, Instagram. Visit her website at www.TracyJongLawFirm.com.

PHOTO CRED: MEGA