When is it ok to change your mind? Although he is only 23 years old, by all accounts, NBA player Luka Dončić of the Dallas Mavericks is a successful player and seems destined to join the ranks of one of the greatest players ever. Already his statistics are incredible. In his 3-year career, he has already had 3 All-Star appearances and 3 All-NBA First Team selections. However, his good fortune on the court does not extend to his personal or business life as he is now in a trademark dispute with his mother.
Dončić’s mother is Mirjam Poterbin and she began managing Dončić’s business when he was an up-and-coming teenage basketball player in his native Slovenia. Poterbin filed a trademark application for LUKA DONCIC 7 on November 28, 2018, just months after Dončić was selected as the third overall pick in the NBA Draft. Because the application was for a living person’s name, it was required to, and did include a written consent signed by Dončić, who was then age 19. The LUKA DONCIC 7 mark registered on January 7, 2020.
Later, Dončić formed his own company, Luka99, Inc. (“Luka99”). One would have expected that Poterbin would have then assigned the LUKA DONCIC 7 registration to Luka99, to facilitate unity of ownership, but that did not happen. On June 11, 2021, Dončić’s company, Luka99, Inc., (“Luka99”) filed its own trademark application for LUKA DONCIC for numerous goods and services. On March 9, 2022, the USPTO refused this application based upon Poterbin’s existing registration for LUKA DONCIC 7. On September 6, 2022, in response to the office action, Luka99 filed a petition to cancel the cited LUKA DONCIC 7 registration and the application is now suspended.
The petition to cancel claims that Dončić provided written notice of the revocation of his consent on July 23, 2021 and that as a result: the LUKA DONCIC 7 mark falsely suggests a connection to Dončić and the registration remains registered without his consent. It also claims that Poterbin has abandoned the registration due to non-use.
In response, on October 20, Poterbin filed a motion to dismiss the cancellation action, claiming that (1) because Dončić did not object to the registration of LUKA DONCIC 7 at the time, there are no valid grounds to contest it now; (2) Luka99 cannot claim either false suggestion of a connection with Dončić or registration because of the 2018 consent; and (3) there are not sufficient facts alleged regarding the claimed abandonment of the mark.
Just last week, on November 2, 2022, Luka99 responded to the Motion to Dismiss by restating that Dončić’ revoked the previously granted consent to register and there is a clear false connection between LUKA DONCIC 7 and Dončić’. Luka99 admits that whether consent at the time of registration can later be revoked is an “as-yet uncharted issue in both the federal courts and under Board precedent.” It is difficult to prevail on a motion to dismiss before the TTAB, and it seems likely that the cancellation will go ahead on at least one of the grounds.
We will watch this case to see whether Dončić’s winning ways extend to the USPTO, but we hope that mother and son can settle this amicably.