by Rosanne Yang

Skateboarding has made its Olympic debut, and with it came a 13-year-old Brazilian nicknamed Fadinha (real name: Rayssa Leal), who delighted audiences and took the silver medal in the women’s street competition. And then news broke that a kind-hearted trademark attorney in her home country saw that “Fadinha” had not yet been registered as a trademark for skateboards and related products, so she quickly filed an application. The attorney let the world know via a tweet that she had done so to prevent trouble for the phenom down the road. She says she plans to transfer the rights to the skater or her parents at no charge, and is reportedly now working with the family to continue the trademark registration process.

It is heartwarming that a complete stranger would go out of her way to help protect the young star [we will be charitable and ignore the immense marketing value that came from this filing], but readers should beware before trying this themselves, no matter what the motivation.

Trademark laws around the globe differ, so what may be permissible in one country will not be permissible in another. Some countries, like Brazil, grant trademark rights on a “first to file” basis – the first person to file for a mark is generally (with some exceptions) the one with enforceable rights. Other countries, like the United States, will recognize the first user of a mark to be the rightful owner regardless of who files first.

Importantly, in the United States, when you file a trademark application based on an intent to use the mark, you state:

1. That you believe you are entitled to use the mark in commerce.

2. That you have a “bona fide” (in other words: good faith) intention to use the mark in commerce for the goods or services listed in the application.

3. That, to the best of your knowledge, no one else has the right to use the mark in commerce for those goods or services, or anything that nearly resembles it such that it would be likely to cause confusion.

4. That everything in the application is true or believed to be true.

You make these statements under penalty of perjury, which – the form warns you if you are reading carefully – is punishable by fine, imprisonment, or both. The form goes on to warn that any willfully false statements may jeopardize the validity of the application or any resulting registration.

Does “I have a good faith intent to give the application to its rightful owner” make it all ok? Most emphatically: no. That’s not use in commerce under US law, and you know someone else has a better claim to it. One might refer to this sort of situation as trafficking, piracy, or even fraud on the Trademark Office. US trademark laws are designed to prevent just this type of trafficking in trademarks. Without qualifying use of the mark or a business associated with the effort that you are transferring together with the application, you will not be able to assign anything to the rightful owner of the mark. The whole effort, then, is a bust and you will have risked perjury to try it.

In any case, this situation reveals how important it is to protect your own brand names as early as possible, and in any country where your business or your talent is likely to take you.

Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.