“Like Father, Like Son” SHAQ Trademark Controversy
Photo by Markus Spiske
Shaquille O’Neal is well-known for his incredible hall-of-fame basketball records while playing with the Lakers and other NBA teams. Besides being an NBA superstar, Shaquille O’Neal, commonly known as “Shaq,” is also known for being an astute businessman, having made several investments in franchises such as Papa Johns, Auntie Anne’s, 24 Hour Fitness, Krispy Kreme, and more. With all of his various business and entrepreneurial dealings, it should be no surprise that Shaq has a few trademarks secured. One of the trademark registrations that Shaq received was for his own name, “Shaq,” for various classes regarding his likeness.
One of the investments Shaq made was in a company known as “Authentic Brands Group” or “ABG,” a brand development, marketing, and entertainment enterprise. With his investment, Shaq became the second largest shareholder in the company. As part of the deal for becoming an investor, Shaq sold his name and likeness to ABG, including trademarks, for the company to use in merchandise and endorsements. One of these trademarks was for the word SHAQ.
Shaq’s son, Shaqir, has made quite the name for himself in the college basketball and pre-NBA realm. With Shaqir garnering attention from brands wishing to use his name and likeness in endorsement deals, and with him learning the importance of obtaining a trademark from his father, Shaqir hired his own attorney. They filed a trademark application for the word mark SHAQIR O’NEAL in various classes covering marketing and advertising; promoting brands; endorsements; and entertainment. The mark went on to publication but has not been registered due to ABG filing to oppose the mark.
Likelihood of Confusion
ABG argues that there is a “likelihood of confusion” with respect to its registered mark SHAQ (and a few others) and the applicant mark SHAQIR O’NEAL due to the substantial similarities of the name and the goods and services. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. ABG argues that, because of substantial similarities with the marks themselves and the goods/services covered by the marks, consumers will be confused about the origin of the mark. In other words, consumers would likely believe that ABG owns the applicant’s mark SHAQIR O’NEAL just as they own the SHAQ mark.
Onlookers of this matter have argued that, since Shaq is the largest shareholder of ABG, he should give consent for his son’s word mark to proceed towards registration. It turns out, according to one of Shaq’s representatives, that he tried to give consent and did not have an issue with his son’s mark being registered. But, because the company owns the registered mark and not Shaq, as an individual he does not have the ultimate say so in the matter. For the time being, the case is still pending before the Trademark Trial and Appeal Board (or TTAB), and many are looking to see what the outcome will be.
Conclusion
Despite the rumors that Shaq is just trying to teach his kid a hard lesson, and even though he has publicly done that historically, the real takeaway here is that companies (just like individuals) have the right to protect their intellectual property even if this will make family gatherings a little awkward for a while.
For more information on this article and this topic, contact Daphne Benford-Smith.