Nike and Roger Federer’s Trademark Dispute
Roger Federer is considered by many to be the most successful male tennis player of all time. He ranks #7 in Forbes magazine among the world’s highest paid athletes. Federer has had a sponsorship agreement with Nike for over two decades and he won all 20 Grand Slam titles while wearing Nike clothes. Nike’s sponsorship agreement with Federer was reportedly for 7.5 million dollars per year but it expired in March 2018 and recently the world famous tennis star signed a sponsorship agreement with the Japanese company Uniqlo for 22 million dollars a year. So what’s wrong? Federer wants ownership of his most valuable trademark.
Even though contract terms between Nike and Federer are confidential, trademark registration records around the world and Federer’s public statements make clear that he is not the owner of his most famous and valuable trademark, his “RF” initials.
According to Tennis World USA, Roger Federer said during a conference call at Wimbledon: “The RF logo is with Nike at the moment, but it will come to me at some point. I hope rather sooner than later, that Nike can be nice and helpful in the process to bring it over to me. It’s also something that was very important for me, for the fans really. Look, it’s the process. But the good news is that it will come with me at one point. They are my initials. They are mine. The good thing is it’s not theirs forever. In a short period of time, it will come to me.”
The fact is that even though Federer inspired, collaborated on and promoted the design, according to trademark law he is not the owner and Nike will not just freely give him the rights to use the trademark just to be “nice and helpful”, especially now that he has signed a contract with Uniqlo and was wearing Uniqlo sponsored clothes during Wimbledon. In practical terms, this means that Roger Federer could be sued for infringing Nike’s trademark if he uses it. If this happens, this would cost Roger Federer a lot of money since Nike would have a claim for willful trademark infringement which greatly influences the amount of damages that a court would award.
While Roger Federer registered his full name and signature as trademarks, it was Nike, the sports footwear and apparel giant, who registered the ‘RF’ trademark in 2010 and therefore, Nike is the owner of the logo in various registries across the world in international classes covering clothing and footwear.
Trademark Rights in Sponsorship Agreements
It is very important to discuss Intellectual property ownership when brands are being created and when sponsorship agreements are being negotiated. If that had been done, it would be Nike the one that would be seeking to license the trademark rights to the valuable trademark logo.
Famous celebrities make most of their money from endorsements, sponsorship agreements, public appearances and merchandising deals. That is why entertainment personalities and sport figures like Roger Federer need to register their names, nicknames, initials, slogans and pretty much anything that the consumer associates with them. They can then negotiate license agreements with third parties while retaining full ownership and control of their branding. These trademark portfolios, if managed correctly, can continue to make money even after the celebrity dies. In Roger Federer’s case, his tennis legacy at 36 years old continues to be so strong that it will take decades for another tennis star to catch up to the level of success and brand recognition he has achieved.
So what will Roger Federer do now? Seeing how he publicly complained about not being able to use his own initials, it seems that he tried negotiating the ownership of the trademark with Nike and was not pleased with their answer. Now he’s trying to use the power of the media and his millions of fans to pressure Nike. His intention can be inferred from this statement he made during Wimbledon: “It’s also something that was very important for me, for the fans really”. Putting Nike on blast is a bold move because if Roger Federer’s loyal fanbase stops buying the ‘RF’ trademark currently sold by Nike and stops associating it with Roger Federer, not only will Nike lose money, the trademark will begin to rapidly lose value and perhaps that is what brings Nike to the negotiating table sooner than expected.
Never sign a Trademark Licensing Agreement without a qualified Intellectual Property Attorney’s advice. Got questions? Contact us!