Caleb Williams, George Gervin, An ‘Iceman’ Trademark And Insulated Boots…Oh My?

from the iced-out dept

If you’re not a particular kind of sports fan, a certain trademark dispute may have escaped your attention. The Chicago Bears quarterback is Caleb Williams and he’s pretty great. He also has acquired a nickname: “Iceman.” This nickname has become so associated with him that it is even referenced on Williams’ appearance on the cover of this years Madden video game.

George Gervin is an NBA legend and he was pretty great. A Hall of Famer who played in the 70s and 80s, Gervin’s on the court demeanor was one of calm and focus. As such, he acquired a nickname: “Iceman.” The nickname became so associated with Gervin that it resulted in then-iconic posters featuring it, such as this one.

And, rounding out our participant list for this particular story, is LaCrosse Footwear. They make boots. I have no idea if they’re pretty great or not. More on them in a moment.

Okay, so here’s the timeline of what happened. After being nicknamed “Iceman,” Williams decided to apply for several trademarks for the term, including both stylized logos and a basic word mark for the term itself. This appears to have pissed off Gervin who never attempted to trademark the term himself. After learning the Williams applied for the mark, Gervin then applied for the same mark afterwards, arguing that because he’d been using it all this time, it was his first.

Williams’ application has been initially rejected by the USPTO, but not due to anything to do with Gervin. Gervin’s application has also been rejected by the USPTO, but not due to anything to do with Williams. Instead, it’s LaCrosse Footwear and their line of insulated boots which are branded, you guessed it, “Iceman.”

LaCrosse, an Oregon-based footwear company, owns the trademark “Iceman” for one of its boots and boot liners. Williams had applied for trademarks in multiple categories, including clothing, and that allowed the USPTO to offer the broad refusal of his application.

“These marks are identical in appearance, sound and meaning,” the USPTO wrote in its refusal letter. “… Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.”

The USPTO on Friday also gave an initial refusal to Gervin’s attempt to trademark “Iceman 44” due to the LaCrosse line.

Now, this may sound absurd, and it sort of is, but these initial rejections are also very common. Well more than half of trademark applications are initially rejected based on the USPTO finding literally anything similar so that they can broadly reject the application. It’s a sort of weeding out process that allows for the applicant to then appeal the decision and argue against any likelihood of confusion. I fully expect that to happen here, because nobody is going to somehow mistake a clothing line for an NFL star, or an NBA legend, with a line of insulated sporting boots.

Which sets up the real question of who gets to be “Iceman,” Williams or Gervin? Josh Gerben chimes in on the ESPN article.

“The registration that they’re citing here is for obviously a very limited product line. Literally insulated boots,” Gerben said. “Look, it might be harder for him to get Iceman registered for a brand of clothing items because of that, but there’s other things in his application that he could possibly still wind up with a registration here.”

The USPTO examiner, though, warned in the refusal to Gervin that if both he and Williams appeal and win, Gervin’s application would likely still be potentially denied because Williams applied first. That could set up a trademark battle between the two athletes, Gerben said.

Indeed. Because the American system is a first-to-use instead of a first-to-file trademark system, Gervin would then need to oppose Williams’ mark, or sue him, in order to argue in court that he has a valid claim to the mark based on first use. But that isn’t all. He’d also have to demonstrate that he’s been continuously using the mark in commerce as well. I poked around a bit and can’t really find any explicit uses of the mark by Gervin since the 90s and it appears that at least one of his applications indicated that he wasn’t currently using it in commerce for some of the categories for which Williams applied.

In this case, Gervin’s use of the trademark ‘Iceman’ appears to be limited to a few videos on his website. His applications even admit that he has no active use of the ‘Iceman’ brand for clothing.

This is not the type of active, ongoing commercial use that is likely sufficient to defeat a prior-filed trademark application (such as Caleb Williams’s) on a claim of priority based on longstanding use of the trademark. Of course, Gervin may have other evidence that was not put into the trademark application, but at the moment, it appears Williams may have room to push back on the claims being made by Gervin. 

Now, another option here would be for everyone to just calm the hell down and let a nickname be a nickname, sans any need to trademark the term. Gervin has demonstrated pretty well that a trademark wasn’t needed for his nickname to be associated with him, nor to be used (at least a ways back) in commerce. There’s no reason that they can’t both be “Iceman” in other words.

But if it’s a fight we’re going to get, I’m with Gerben in thinking that Williams is in the strongest position. And I’m damned sure that a boot maker probably can’t argue any real likelihood of confusion.

Filed Under: caleb williams, george gervin, iceman, icemen, trademark, use in commerce

Companies: lacrosse