Super Bowl and the NFL’s Trademark Offense

My local Super Market is advertising its assortment of “Big Game” supplies.  The store felt free to use “Big Game” to describe the Super Bowl since the USPTO rejected the NFL’s attempt to register a trademark on the that particular phrase. My local sports bar was bold enough to advertise their “Super Bowl” party in a local advert.  The bar must be a risk seeker.  The NFL is clear in its website terms of use that everyone is “expressly prohibited from using or misusing any [NFL] Trademarks.”  And, the NFL has aggressively protected its mark.  

In a recent post, attorney-blogger Ken Basin took aim at the NFL and explained his opinion that the NFL is over-reaching.  His argument is that the doctrine of nominative fair use is certainly broad enough to allow a company to use the words “Super Bowl” when advertising a product or service to be used in conjunction with the Super Bowl.

Courts recognize that it’s virtually impossible to refer to particular products or services without using protected trademarks — how can I review the new Apple iPad without using the words “Apple” or “iPad”? That’s why the law allows the public to freely use a protected trademark nominatively, i.e., to describe the product or service underlying the mark, often in the only way that makes any sense. We lawyers call this idea the “nominative fair use” doctrine. And it applies even where the speaker’s goal in using the mark is to describe and promote its own products or services.

Read Ken’s Post.

Mark McKenna — an avid sports fan and Notre Dame law professor has written several articles attacking the current breadth of trademark law.  One of his focal points has been the extension of trademark rights to cover merchandise such as t-shirts and jerseys. The recent paper by McKenna and Mark Lemley titled “Owning Mark(et)s” is on point.

27 thoughts on “Super Bowl and the NFL’s Trademark Offense

  1. 27

    But instead, he and his wife were displaced, forced to watch their beloved Pittsburgh Steelers play on a television screen with a seven second delay

    Oh, the indignity! Not only forced to watch the game on television, but only getting the full enjoyment seven whole seconds later than the handful of people who were in the same room as the game.

    It sounds like he has suffered less actual harm than a non-practicing patentee, and possibly even less than the NFL suffered from his sign. He’d better get a good cardiologist to testify that he now has a broken heart.

  2. 26

    Look at a few buddies of mine, pretty smart from what I’m told, good LSATs n grades n all, and they’re all miserable in life last I heard.

    That might be because “pretty smart” isn’t going to cut it. There are lots of “pretty smart,” pretty mediocre, patent attorneys out there, who don’t make a lot and write prett sorry cases. D@mn smart, and smart enough to not crow about it all the time, is what you need if you’re going after the big bucks.

    Look around, dude. You’re in a building full of “pretty smart” people. Right where you belong.

  3. 25

    Here is a similar story

    Matthew Rush arrived at Cowboys Stadium in his Hines Ward jersey, excited to watch Super Bowl XLV.
    Rush was one of the 400 fans who was supposed sit in temporary bleachers constructed for the game this past Sunday.
    But instead, he and his wife were displaced, forced to watch their beloved Pittsburgh Steelers play on a television screen with a seven second delay

    He was angry, so he made a sign. And this was not the type of sign that read “D-Fence” or “Go Pack Go.”
    This sign said: “SueSuperBowl.com.”
    “Speechless. Stunned. Angry,” is how Rush, 40, of Philadelphia, described it. “I still feel like I’m dreaming and I’m going to wake up from it.”

  4. 24

    That’s exactly the problem. They are trying to enforce it against people who are using it permissibly.

  5. 22

    6: Money literally doesn’t appeal to me. Money comes and goes. With power you can write your own little piece of history.

    Tony Montana, Patent Examiner

  6. 21

    Big Bucks?

    Precisely when do these “big bucks” start rolling in? And precisely how much bigger are they than the bucks I could make pulling overtime, getting promos, and investing that money over the next 3 years?

    Now let’s consider all of the above taking into account loans for school and interest on that.

    About how long are we talking to break even? 5 year post grad? 10 years? 20 years if I happen to do well in my hypo investing? How many of those years will be spent sans “the good life”? How fat will I be when I get out? At what cost in terms of hours spent working will these big bucks come?

    If I bother to go to lawlschool it sure as f would not be for big $$$. It will be to learn, make contacts, and prepare for politics after paying off school so that I have power. Money literally doesn’t appeal to me. Money comes and goes. With power you can write your own little piece of history.

    I can literally go be a low level executive at a well financed and decently established start up right this minute. Literally I can get on a plane and have a position waiting. Ironically it would be a position where I’m bossing attorneys like you guys around and btching about your high prices. Which is actually probably what I’m going to end up doing shortly. And they’ll probably want me to go to school in Cali. And don’t think I’m bragging because this is about as appealing to me as eating a sht sandwich. It’d be stressful. I’d have to make all new friends. And because my friends around here keep moving away :(. You know, the “losers” who have no job (worth mentioning anyway) and who live in my nowheresville hometown at least have friends who aren’t moving away anytime soon and who don’t live 15 minutes away minimum.

    But I’ll probably do it for the lulz.

    But really, take a minute and tell me, if you know, how long does it take for a law degree to start paying for itself, assuming a pretty decent job right straight out of school and assuming I was an examiner to start?

    Look at JD, he’s been out of school for a long time now and he literally could not afford to take a job at 150k$ to do what he loves, btch all day and try to fix the patent system. Look at a few buddies of mine, pretty smart from what I’m told, good LSATs n grades n all, and they’re all miserable in life last I heard. And that’s saying something since you dn’t normally ask someone about how an old buddy is doing and they turn to you and tell you that they’re doing shty. Look at this girl I know here at the office doing law school at the same time. She’ll probably be divorced and/or cheating by the time she’s through. I might not be the happiest camper here at the office but I’m far from miserable and/or going nuts from stress.

  7. 20

    Dontcha know Cy,

    6 be too busy with the Office stuff to be bothered with the big bucks.

    So the straight-forward answer to your question is: “Yes”.

  8. 14

    both bloggers say the NFL is “overreaching” but they fail to provide any examples of the NFL attempting to shut down a superbowl party or a superbowl tv sale. Does the NFL really bother with those?

  9. 13

    Right, so how do you account for DC’s comment that the sports bar advertising a Superbowl party must be a risk-seeker?

    You’d have to ask Dennis (and you did), but I assumed it was some sort of half-jest based on the very broad language on the NFL website.

    I haven’t seen anybody mention that any authorized broadcaster has been threatened or sued by the NFL. I think people (and Dennis isn’t the one who started it) are playing up a party’s general and legitimate intention to defend its rights into the actions of a cartoonish supervillain.

  10. 12

    Right, so how do you account for DC’s comment that the sports bar advertising a Superbowl party must be a risk-seeker?

    I presume that the bar was actually broadcasting the game.

    If so, and if it had the required license, is the risk associated with the advertising of the “party” rather than of strictly the broadcast? Did the “party” occur at some time other than did the broadcast?

    Dennis?

  11. 11

    Am I to understand that fair use of the term Superbowl is not necessarily appurtenant to the grant of the broadcast license, if not explicitly granted in the license itself?

    I don’t know about “necessarily appurtenant”, but it would certainly be expected by a licensee who, it is understood by both parties, is licensing the broadcast with the intention of attracting paying customers to watch it.

    It would be pretty difficult to promote one’s authorized broadcast of the game without using any NFL-owned trademarks.

    I expect the NFL is mostly targeting people who do things other than broadcasting the game under license – most notably selling ancillary products for use on the occasion of the game that might not even be sponsors of the game itself, but possibly also another way to go after unauthorized broadcast. After all, it doesn’t pay to sue one’s customers for being customers.

  12. 9

    I don’t know much about trademarks, help me out here:

    Presumably a bar that re-broadcasts the NFL Superbowl broadcast, for its own pecuniary gain, does so pursuant to a license purchased from the NFL.

    Am I to understand that fair use of the term Superbowl is not necessarily appurtenant to the grant of the broadcast license, if not explicitly granted in the license itself?

  13. 8

    There’s also the issue that if the nominative fair use doctrine is spread broadly enough, it starts to allow genericide of even arbitrary trademarks: “I’m just advertising my iPad Cozy as a cover for the generic class of products called iPads.”

    No, you’re saying it fits the particular product branded as an iPad. Granted, it’s technically improper to use the mark as a noun, but nobody in real life calls it an “iPad portable computing device” or whatever anyway, which is the reason you called your accessory an “iPad Cozy” in the first place.

    Incidentally, doesn’t the NFL use its own mark in a generic way? It’s not the “The Big Game football match” or the “Super Bowl NFL championship game”. They always call it “The Super Bowl”. They’re lucky Clark Kent doesn’t sponsor a breakfast cereal, quite frankly.

    If you’re advertising an event that was deliberately organized so that attendees can watch the Super Bowl, just what are you supposed to call it?

    I suppose you’d run into serious legal problems if you were holding a “Super Bowl party For The Cure”. But not as serious as the practical problem of turning a profit on a Super Bowl party wallpapered with pink ribbons.

  14. 7

    Sure, nominative fair use is broad enough to allow advertising of accessories to a trademarked product, but there’s still the requirement that the user not create a likelihood of confusion of an association, endorsement, or common origin with the trademarked product’s origin.
    There’s also the issue that if the nominative fair use doctrine is spread broadly enough, it starts to allow genericide of even arbitrary trademarks: “I’m just advertising my iPad Cozy as a cover for the generic class of products called iPads.” This would be less of an issue if people were advertising their “NFL’s Super Bowl” parties with proper disclaimers… but come on… who’s doing that?

  15. 6

    And you really know how to read Sunshine. Or did you not bother to read my jinxing effect?

    Do you know what a gooch is? Were you in any way involved in competitive sports at any point in your life?

    Smell the roses Sunshine.

  16. 1

    As a consumer of professional football goods and events, I am confused by this post’s use of “Super Bowl” – is this post somehow associated with the NFL’s event of the same name? I read the post and commented based on my understanding that there is some affiliation with the actual Super Bowl, and now my goodwill and willingness to buy actual Super Bowl merchandise has decreased.

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