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According to the USPTO Muhammad Ali is Still “Cassius Clay”

It is well-known that in the mid-1960’s heavyweight boxing champion Cassius Clay joined the Nation of Islam and his name was changed to “Muhammad Ali.”  In fact, Ali stopped using the name “Cassius Clay” altogether from that time forward.

According to the U.S. Patent & Trademark Office (PTO) records, it appears that Muhammad Ali Enterprises, LLC received a federal trademark registration for the trademark Cassius Clay on April 20, 2010, Reg. No. 3779469, having received the requisite consent from Muhammad Ali himself to receive such registration in its name.  According to PTO records, the trademark CASSIUS CLAY is used in connection with clothing and toys.

The question may be asked, “Why must a trademark applicant get permission to use a name that another person so publicly abandoned so many decades earlier?”  Well, according to the U.S. Trademark Manual of Examining Procedure Section 813:

When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow, respectively. 15 U.S.C. §1052(c).  The requirement for consent also applies to the registration of a pseudonym, stage name, or nickname, if there is evidence that the name identifies a specific living individual who is publicly connected with the goods or services, is generally known, or is well known in the field relating to the relevant goods or services. See TMEP §§1206–1206.05 concerning refusal of registration under §2(c) of the Trademark Act, 15 U.S.C. §1052(c), when a mark in an application comprises the name, portrait, or signature of a living individual whose consent to register such name or likeness is not of record.

So, even though Muhammad Ali had dropped the name “Cassius Clay” more than 45 years prior to the trademark registration, the U.S. Patent & Trademark Office still treated the name “Cassius Clay” as referring to the boxer Muhammad Ali.

A similar situation arose in regard to NBA basketball legend Kareem Abdul-Jabbar, who was originally known by the name “Lew Alcindor” when starring in college for Coach John Wooden’s UCLA Bruins.  In 2003, an individual applied for a trademark registration for the mark LOU ALCINDOR for clothing.  Even though the first name of the applied for mark was spelled differently than the basketball legend and even though the trademark application was filed many decades after Alcindor had changed his name, the PTO refused registration of the mark because it did not include the written consent of Lew Alcindor.  In explaining its basis of refusal, the PTO stated that the mark LOU ALCINDOR would likely be construed by the public as a reference to Lew Alcindor who is “also known as Kareem Abdul Jabbar.”

Final Thought:  Just because a person abandons his/her legal name for a different name, the PTO may still consider the name as being associated with the person for trademark purposes, especially when it concerns a public person or celebrity.

©2016.  This article was written by Scott Compton, J.D., who practices with Buche & Associates, P.C. and is a patent and trademark specialists.  Scott has particular interest in handling trademark issues that affect athletes, in part because of his own background as a professional athlete.  He can be reached at scompton@buchelaw.com See also: www.buchelaw.com; www.southerncaliforniapatents.com

 

 

 

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