The Trademark Trial and Appeal Board recently issued a precedential decision affirming an Examiner’s refusal to register WEMBY for athletic apparel. It is a rare precedential Trademark Trial and Appeal Board decision rendered under Sections 2(a) and 2(c) of the Lanham Act, which are not the frequent subjects of litigation. The Board found that WEMBY falsely suggests a connection with the NBA basketball superstar Victor Wembanyama, and also identified him, without his written consent. In re Wemby Corporation offers one of the most thorough recent discussions of Section 2(a)’s false connection prohibition and serves as a reminder that use of famous names, and even famous nicknames, carry trademark risks beyond traditional likelihood-of-confusion analysis.
The applicant argued that it should be deemed the prior user of WEMBY because its constructive first use date (January 12, 2023) was prior to Wembanyama rising to NBA fame after being drafted by the San Antonio Spurs in the summer of 2023. The Board rejected this argument under the Federal Circuit’s recent decision in In re Foster, where the Board analyzed a trademark application using the four-part test for establishing a false suggestion of a connection under Section 2(a).
Section 2(a): False Connection
To establish a false suggestion of connection under Section 2(a), the USPTO must show:
- The mark is the same as, or a close approximation of, a name or identity previously used by another person;
- The mark points uniquely and unmistakably to that person;
- The person is not connected with the applicant’s goods or services; and
- The person’s fame is such that consumers would presume a connection.
The third factor was undisputed because Victor Wembanyama had no relationship with the applicant. Likewise, the Board had little difficulty finding that “WEMBY” was a nickname used to identify Mr. Wembanyama prior to his drafting in 2023, relying on media coverage from Sports Illustrated, The Athletic, The Ringer, CBS Sports, and Mr. Wembanyama’s own social media activity.
The most significant aspect of the decision is the Board’s analysis of the second element.
Here, the Board concluded that WEMBY satisfied that demanding standard. The record showed that major sports media consistently used “Wemby” as shorthand for Victor Wembanyama, and the nickname had become widely recognized by basketball fans. Looking at the record as a whole, the Board found that WEMBY “is a well-recognized nickname that points uniquely and unmistakably to Mr. Wembanyama.”
The Board also found the fourth element satisfied because Mr. Wembanyama’s fame as an NBA player, coupled with the close relationship between professional basketball players and athletic apparel, would lead consumers to presume that apparel sold under WEMBY was connected with him. Evidence of his Nike shoe debut and the commercial success of Wembanyama jerseys reinforced that conclusion.
Section 2(c): Consent
The Board also affirmed the refusal under Section 2(c), which independently bars registration of a mark that identifies a particular living individual without that person’s written consent. Unlike Section 2(a), which focuses on whether consumers would falsely assume a connection, Section 2(c) protects an individual’s identify from unauthorized trademark registration regardless of whether a connection can be shown.
The Board reiterated that a proposed mark identifies a particular living individual in either of two circumstances: 1) when the individual is so well known that the public would reasonably assume a connection; or 2) when the individual is publicly connected with the business in which the mark is used. Here, the Board found that both standards were satisfied. First, Mr. Wembanyama’s widespread fame and the public’s recognition of “Wemby” as his nickname meant consumers would naturally associate the mark with him. Second, as one of the NBA’s most recognizable young stars, with signature Nike footwear, licensed jerseys, and extensive merchandising, he was plainly connected with the athletic apparel industry, which is obviously the business identified in the application. Because the applicant lacked Mr. Wembanyama’s written consent, the Board affirmed the refusal under Section 2(c) as an independent basis for denying registration.
Although litigated celebrity-related trademark refusals are relatively uncommon in Board decisions, In re Wemby Corporation provides valuable guidance for brand owners. The decision demonstrates that:
- Nicknames, not just full names, can qualify for protection under Sections 2(a) and 2(c);
- Substantial media recognition can satisfy the “uniquely and unmistakably” hurdle in a false connection refusal; and
- Examining attorneys may rely on evidence developed throughout prosecution, not merely evidence predating the filing date
- Applicants may face two independent statutory obstacles when seeking to register a celebrity’s name or nickname. Even if a mark survives a false connection challenge under Section 2(a), it may still be refused under Section 2(c) absent the individual’s written consent.
As athlete branding and NIL rights continue to expand, In re Wemby provides an important roadmap for how the USPTO will evaluate trademark applications built around the identity of a famous living person.