Background of the case
Luka Dončić is a Slovenian professional basketball player for the Dallas Mavericks of the National Basketball Association (NBA). Dallas Mavericks' rising superstar has quickly emerged as one of the NBA's top players. By the age of 22, he's earned three consecutive All-NBA First-Team nods and holds the second-highest career playoff scoring average in league history. Back in 2018, during his rookie season in the NBA, Luka Doncic agreed to his mother registering his name as a trademark, but since then tried to regain ownership over the trademark and failed as Mirjam Poterbin refused to transfer ownership.
Dončić initially tried to register "Luka Doncic" as a trademark, but it was dismissed due to the existing "Luka Doncic 7" trademark. The USPTO preliminarily rejected the registration of Dončić's 2021 applications for "Luka Doncic" and "Original Hoops of Luka Doncic" because they're too similar to "Luka Doncic 7" and might spark consumer confusion. A third application concerning "Luka Doncic" for use in charitable fundraising services hasn't been acted upon. This could become a big issue for his emerging brand as the NBA's top player.
Importance of personal branding
Personal branding is essential for pro athletes, as it helps them build and sustain their reputation in the mind of fans and consumers. While game contracts are the main way professional athletes earn money, another significant part comes from endorsement deals and partnerships. The more fan support and attention athletes get, the more their athlete brand is worth to sports teams, sponsors, and famous sports businesses like Adidas and Nike. We have witnessed other renowned sports figures such as Michael Jordan and Lionel Messi spend years in trademark disputes to take control over their intellectual property to utilize it for branding purposes.
While playing their sport is a huge part of an athlete’s job, that part of their career will inevitably come to an end. With that being said, their legacy does not have to end as soon as they step off the field. Maintaining influence through other endeavours will be significantly more manageable when they have spent the time to grow a dynamic and profitable personal brand.
As a rising basketball star, Dončić recognizes the importance of taking control of his personal brand. The existence of conflicting trademarks, however, prevents Dončić from holding clear rights to use his own name. This emerging trademark dispute is complicated not only because it involves a conflict between family members but also raises a rare and potentially unprecedented legal controversy where consent to register a trademark that references a famous individual is granted and then subsequently revoked.