The Luka Doncic Case May be a Slam Dunk of Intellectual Property Implications

A peculiar dispute involving NBA superstar Luka Doncic, his mother, and his logo have legal experts scratching their heads over what appears to be a glaring legal loophole in trademark rights. How it is ultimately resolved may affect not only intellectual property law, but contract law as well. 

Wearing #77 for the Dallas Mavericks, Doncic has been blocked by the US Patent and Trademark Office in his efforts to register ‘Luka Doncic 77’. Why? Because the trademark ‘Luka Doncic 7’ was previously registered in 2018 while Doncic wore #7 for Spanish basketball squad Real Madrid. However, Doncic did not register that logo himself – his mother did, with his permission. The USPTO has found that the two trademarks are too similar and rejected the star point guard’s attempt to market the ‘Luka Doncic 77’ logo. 

Family Drama = Legal Mess

The state of the relationship between Doncic and his mother, Mirjam Poterbin, is unclear, but it is apparent that Poterbin has not voluntarily renounced her claim on the mark and intellectual property attorneys are unusually split as to Doncic’s chances for wresting control of both logos. The reason for this schism is because, while the law disallows trademarks to be registered without a person’s consent, legal experts contend that there is nothing in trademark law or case law that addresses whether said consent can be revoked after the fact. 

Indeed, while it is agreed that Doncic allowed his mother to register ‘Luka Doncic 7’ in 2018, it is not only a trademark of himself, it is also preventing him from capitalizing on current potential trademarks. A cancellation petition filed by the star basketballer notes that he made his pro debut with Real Madrid at the age of 16 and relied on his mother to make business decisions on his behalf. 

While the ‘Luka Doncic 7’ trademark was registered when he was 19, the petition notes that he was still “young and inexperienced” in business matters. It also claims that Doncic is no longer “affiliated” with Poterbin in any business relationship and that, as she has not made use of the current ‘Luka Doncic 7’ trademark in the United States, it should be considered abandoned. 

Doncic’s Legal Maneuverings Face a Full Court Press

Therein lies the crux of the dispute. IP experts just don’t know if this supposed abandonment of the mark gives Doncic legal authority to withdraw his permission for use. The Lanham Act, while expressly forbidding trademark infringement and false advertising, does not contain any language regarding whether second-party consent must be ongoing after a trademark is registered or if it can be expunged. Despite this omission, Doncic’s petition cites the Lanham Act statutes concerning false association and banning marks referencing a living person without their consent as legal precedents for gaining control of the ‘Luka Doncic 7’ mark. 

Regardless of the perplexing nature of the battle over his naming rights, most legal experts contend that Doncic’s petition is akin to a desperation shot at the buzzer. As trademark law expert Alexandra Roberts contends, “All the Lanham Act… seems to require is consent at the time of registration. So it’s very possible that the Board will not find sufficient basis to cancel.” 

An IP Law Milestone

Whether or not Doncic is able to prevail may have long-lasting ramifications for intellectual property law, especially in the sporting realm. In 2021, the NCAA granted Name, Image, and Likeness (NIL) rights to college student-athletes for the first time, allowing them to receive financial compensation for any registered logos, brands, trademarks, et al. Collegiate sports stars – and their families/managers – will undoubtedly be watching the progression of this family squabble with great interest. 

As the above quarrel suggests, intellectual property and trademark law is a constantly evolving legal field, with many new challenges and situations arising frequently. IP attorneys must always be on their toes and stay ahead of the curve to meet these unique circumstances head on. Richards Rodriguez and Skeith’s team of seasoned and experienced IP and trademark attorneys always strives to be at the forefront of the latest legal developments in order to give our clients – and their property – the strongest possible protection. Contact us today to see how we can help you!