Typically, a trademark dispute consists of one entity accusing another of infringement, where the trademark owner claims that the defendant is trading off the owner’s goodwill, or dilution, where the owner claims that the defendant’s use of the trademark is sullying its market value. In the case of National Basketball Association (NBA) phenom Luka Doncic versus his mother, however, a novel question of law is implicated: Can someone who legally consented to be referenced in a trademark rescind their consent and later cancel the trademark?[1]

Doncic’s skill and talent were apparent from a young age, signing a professional basketball contract with top EuroLeague basketball team Real Madrid at the age of thirteen and subsequently making his professional debut at the age of sixteen.[2] After numerous accomplishments—such as receiving the Most Valuable Player Award for the EuroLeague regular season, EuroLeague Final Four, and ACB (the top professional basketball league in Spain)—he was selected third overall in the 2018 NBA Draft by the Atlanta Hawks, who subsequently traded his draft rights to the Dallas Mavericks.[3] After continuing his high level of play, becoming a franchise player for the Mavericks, and developing into one of the league’s brightest young stars, Doncic signed a “landmark” five-year, $207 million contract extension during the 2021 NBA offseason.[4]

In order to take advantage of the increased business opportunities made possible by his popularity, Doncic organized Luka99, Inc.[5] His applications to register trademarks such as LUKA DONCIC and ORIGINAL HOOPS OF LUKA DONCIC were denied preliminary by the U.S. Patent and Trademark Office (USPTO), which reasoned that the two marks were substantially similar to the already-registered LUKA DONCIC 7 mark and might result in consumer confusion if they were granted.[6] Mirjam Poterbin, Doncic’s mother, had filed to register the LUKA DONCIC 7 mark in 2018 with the USPTO, which approved the mark two years later.[7] At the time of registration, Doncic was a 19 year-old rookie with the Mavericks and consented to the trademark.[8]

Citing current non-affiliation with and non-approval of the Registrant—his mother—or the Registrant’s goods and services, Doncic filed a petition with the Trademark Trial and Appeal Board (TTAB) in September 2022 to cancel the mark.[9] Doncic points to a July 2021 letter to his mother in which he “specifically and expressly revoked the [c]onsent effective immediately” and objected to any future use of the mark by Poterbin.[10] In addition to claiming false association and lack of consent, Doncic argued that because the LUKA DONCIC 7 mark is not currently associated with any goods or services in U.S. commerce, Poterbin lacks intent to resume use of the mark, thereby abandoning it.[11]

The case hinges on silence in both the Lanham Act and case law on the question of whether consent can be revoked after initially granting it in the trademark context. While one cannot register a mark that references a particular person without their consent or that suggests a false association, the issue of revoking consent has not been resolved.[12]

It would be difficult for Doncic to suggest false association, as it is in tension with the fact that Doncic was of legal age when he did consent to the LUKA DONCIC 7 mark.[13] Doncic’s best chance lies in proving the abandonment theory: Section 45 of the Lanham Act states that three consecutive years of non-use can establish a prima facie case of abandonment.[14] However, this presumption can be rebutted if the owner provides evidence that they intend to resume use.[15]

This case has major implications because in today’s world of sports and entertainment, there are athletes, entertainers, and musicians of all ages. For young entertainers who are under the age of majority or cannot predict the trajectory of their careers, should we allow them to get “stuck” at a young age, making them unable to file a trademark of their choosing if a similar, but perhaps outdated, one is already owned by their parents? It remains to be seen how the TTAB will rule concerning this question, but no matter the result, it will seemingly answer a question that has never been contemplated in the Act’s seventy-plus year existence.

[1] Kyle Jahner, Luka Doncic Bid to Get Trademark Back from Mom a Legal Jump Ball, Bloomberg Law (Sept. 19, 2022, 5:10 AM), https://news.bloomberglaw.com/ip-law/luka-doncic-bid-to-get-trademark-back-from-mom-a-legal-jum p-ball.

[2] Petition to Cancel at 2, Luka99, Inc. v. Poterbin (TTAB Sept. 6, 2022).

[3] Tim Macmahon, Luka Doncic Headed to Mavs, Trae Young to Hawks After Teams Swap Picks, ESPN (June 21, 2018), https://www.espn.com/nba/story/_/id/23867178/2018-nba-draft-dallas-mavericks-acquire-luke-doncic-sen d-draft-rights-trae-young-atlanta-hawks.

[4] Adrian Wojnarowski, Luka Doncic Signs Five-Year, $207 Million Supermax Rookie Extension with Dallas Mavericks, ESPN (Aug. 9, 2021), https://www.espn.com/nba/story/_/id/31994570/luka-doncic-agrees-five-year-207-million-supermax-rookie-extension-dallas-mavericks.

[5] See Petition to Cancel, supra note 3; Jahner, supra note 2.

[6] Michael McCann, Luka Doncic Embroiled in Unusual Trademark Dispute with His Mother, Yahoo (Sept. 13, 2022), https://sports.yahoo.com/luka-don-embroiled-unusual-trademark-130000080.html; Jahner, supra note 2.

[7] McCann, supra note 7.

[8] Id.

[9] Petition to Cancel, supra note 3, at 8.

[10] Id.

[11] Id. at 9.

[12] See Jahner, supra note 2.

[13] Id.; see Petition to Cancel, supra note 3, at 8; McCann, supra note 7.

[14] Lanham Act 15 U.S.C. § 45, 15 U.S.C. § 1127.

[15] See id.