Will the USPTO Love It? New XFL Owners Seek Trademark Registration for ‘He Hate Me’

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Michael McCann
·5 min read
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It was a way the XFL—the first version of it, at least—attempted to distinguish itself from the more traditionalist NFL: XFL players could be identified by nicknames. When running back Rod Smart suited up for the Las Vegas Outlaws in the 2001 season, his jersey was emblazoned with “He Hate Me.”

Twenty years later, the XFL’s new owners are attempting to claim ownership over those three words.

As first reported by trademark attorney Josh Gerben, Alpha Opco applied to the U.S. Patent and Trademark Office on Feb. 10 for registration of the mark He Hate Me. The application, which was drafted by attorney Joel Tragesser, seeks registration for a particular band of goods and services: “clothing, namely, tops, shirts, jackets, sweatshirts, bottoms, pants, shorts, underwear, pajamas; clothing ties; scarves; gloves; swimwear; Halloween and masquerade costumes; footwear, namely, shoes, sneakers, slippers, flip flops; headwear, namely, hats, caps; wrist bands [and] bandannas”.

Alpha Opco currently represents the XFL-related intellectual property interests of RedBird Capital CEO Gerry Cardinale, WWE star Dwayne “The Rock” Johnson and businessperson Dany Garcia. The trio purchased the XFL last summer for $15 million in a federal bankruptcy process. The league had been owned by Alpha Entertainment, of which Vince McMahon has served as chairman and CEO. The new and third iteration of the XFL is expected to launch in 2022, two years after the second iteration collapsed under the weight of the coronavirus pandemic.

Smart, who finished second in the XFL in rushing yards in 2001 and later played five seasons for the Philadelphia Eagles and Carolina Panthers, became a household name in a league of mostly obscure players. Fans might not have known Smart’s actual name, but they knew about He Hate Me. Smart would essentially adopt the nickname’s identity, signing autographs as He Hate Me rather than Rod Smart.

There have been several accounts of the nickname’s genesis. In 2004 Smart offered an origin story to the Milwaukee Journal Sentinel. “Basically,” Smart explained, “my brother’s my opponent. After I win, he’s gonna hate me. It is what it is.” No matter how it began, fans loved the phrase. The XFL’s top-selling player jersey? No surprise: He Hate Me.

In 2002, Smart filed for trademark registration with the U.S. Patent and Trademark Office for the famous three-word expression. He sought protection for use of He Hate Me as used in athletic competitions, personal appearances and sports training camps. Three years later, the USPTO awarded Smart registration. Registration provided an array of legal benefits, including presumption of ownership (making it harder for others to claim rights in He Hate Me), the exclusive right to use the mark (helpful to stop infringement) and anti-counterfeit protections from U.S. Customs and Border Protection.

Smart, who is now 44 years old, also applied for and later abandoned several other related marks, including “Rod Smart’s He Hate Me” for apparel and “He Hate Me” for helmets. Smart’s registration was cancelled by the USPTO in 2011 on account of Smart failing to file a declaration affirming his mark had been in use continuously for five years.

In 2016, Alpha Opco, under previous WWE-based ownership, applied for and was later awarded registration for He Hate Me for the same category of goods and services (clothing, footwear etc.) Alpha Opco now seeks.

This is a significant point when making sense of the 2021 application, Alexandra Roberts, a trademark law expert at UNH Franklin Pierce School of Law and author of Athlete Trademarks: Names, Nicknames, & Catchphrases, tells Sportico.

The 2021 application, Roberts stresses, is “identical to an application filed by the same entity in 2016. Both applications are based on the owner’s intent to use the mark in future, but the applicant maxed out the time available to it to begin using the mark on goods sold in interstate commerce and convert the intent-to-use application into a use-based registration, so it had to file a new application to restart the clock, giving it more than three additional years to show use (three years from notice of allowance).”

Roberts, an affiliated fellow of Yale’s Information Society Project and former Ropes & Gray IP litigator, explains that consumer expectations are crucial to predicting how the USPTO will evaluate the new application.

“The interesting question,” Roberts notes, “is whether the USPTO thinks consumers will expect a connection with Smart and will thus bar registration of the mark as creating a false association with a living individual in violation of section 2(a) or 2(c) of the Lanham Act.”

Four years ago, Roberts emphasizes, the USPTO questioned whether He Hate Me refers to or identifies a living individual. Alpha Opco insisted it did not. Roberts notes the USPTO initially found that answer unconvincing. The agency replied to Alpha Opco that, “due to the renown of the person named in the mark… applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods, and if so, must describe the nature and extent.” Alpha Opco later convinced an examining attorney Smart was not connected and the mark didn’t create a false association (also: no one, including Smart, appeared to oppose the registration).

Roberts warns that the 2021 application faces a different set of circumstances than in 2016 and they might pose hurdles for the XFL. “It looks like,” Roberts points out, “Smart uses @HeHateMe as his Twitter handle and @hehateme_30 on Instagram. He made headlines in 2019 after he disappeared and then resurfaced. So, the calculus might be different this time around if the USPTO determines that the mark He Hate Me as used on apparel and connected with the XFL leads consumers to think the products are tied to Smart.”

“It’s interesting,” Roberts adds, “that the XFL wants to reclaim a nickname that was formerly associated with a single player and use it for apparel—we’ll have to stay tuned to see whether it plans to use the phrase as a broader slogan connected with the league or reassign it to a particular player. The fact that it’s taking more than three years to launch the brand suggests perhaps the plan includes more than just sweatshirts and flipflops.”

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