Anyone familiar with snowboarding has heard of Shaun White, a world famous snowboarder, skateboarder and Olympic and X Games athlete.  While Shaun is young, his achievements are impressive.  Many companies have taken notice: some of his sponsors include Burton, R.E.D., Oakley, T-mobile, Target, Red Bull, Sony, Mountain Dew, HP, and American Express, among many others. 

Despite these many sponsorship deals, it is surprising that Shaun does not own any trademark applications or registrations to protect the SHAUN WHITE brand.   However, it appears that Shaun may have licensed use of his name to his sponsor Burton for a line of snowboards, bags, and clothing items.  Burton has filed a trademark application for THE WHITE COLLECTION (Application Serial No. 77048479) for use on “bags, namely, all purpose bags, day packs, backpacks” in Class 18; “snowboards” in Class 28; and “clothing, namely, jackets, pullovers, sweatshirts, shells, pants, vests, shirts, hats, gloves, headbands, long underwear, boots” in Class 25.   The application has initially been refused by the U.S. Patent and Trademark Office on the grounds that the mark is descriptive (i.e., some of the Applicant’s clothing is white or nearly white).  

It can often be difficult for an individual to protect his or her last name when filing a trademark application.  Here, the application has been refused because WHITE in THE WHITE COLLECTION is arguably descriptive.   However, a more common reason for refusal is that a mark is a primarily merely a surname and does not have any trademark significance.  In other words, consumers will not see the mark as a trademark but merely as someone’s last name.  One way to overcome a descriptiveness or surname refusal is to demonstrate that a mark has acquired distinctiveness due to the extensive use and promotion of the mark in the United States.  Typically an applicant shows that a mark has acquired distinctiveness by submitting evidence of the sales and advertising of the goods/services on which the mark is used for at least five years.  The examiner’s determination is made on a case-by-case basis and an examiner is given broad discretion in making that determination. 

For THE WHITE COLLECTION Application, Burton has argued that the line of clothing is named after Shaun White and is not descriptive of the color white.   The application is currently pending before the U.S. Patent and Trademark Office.  



Aimee Kaplan - the trademark attorney dedicated to athletes protecting their celebrity trademarks

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