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.
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.
