Among the NFL’s portfolio of famous brands used to promote football games, its teams, and enough licensed merchandise to furnish a house, U.S. Trademark Registration No. 0882283 for SUPER BOWL® stands tall above all. Original filing date 1969. NFL’s trademark protection strategy for SUPER BOWL® illustrates the balance between necessary vigilance and fair use of one the world’s most famous brands.
Since Woodstock the NFL has strictly policed its trademark rights in the term SUPER BOWL, and enforced its exclusive rights against retailers, bars and other businesses either directly associated with, or in some cases have nothing to do with, football culture and “Big Game” (another term the NFL unsuccessfully attempted to trademark). The NFL is notorious for sending cease desist letters or even publishing ads warning retailers not to use SUPER BOWL without a license. Every trademark owner has a duty to police the use of its mark, but is NFL overdoing it? In most cases there’s probably an argument to be made. This year even Super Bowl advertiser Samsung poked fun at the NFL’s reputation for vigilant trademark enforcement with a teaser spot involving Seth Rogen and Paul Rudd being censored by their attorney when attempting to say “Super Bowl” or the names of the competing teams.
Typically purchasing a commercial spot during the Super Bowl includes with it a limited right to use the coined term in advertising within a time period, for example 2 weeks leading up to Super Bowl Sunday.
Available Defenses to Trademark Infringement
But is the NFL right? Legal defenses are available in some cases, such as where the use of SUPER BOWL constitutes fair use or nomative use. The references to Super Bowl in this article is an example of nomative non-infringing use of a registered trademark.
Under the law trademark owners have a legal duty to police their marks, but some contend the NFL takes a much more heavy handed approach than necessary, striking fast and furious against even potential infringers. But the NFL’s trademark protection strategy is important in protecting the licensing value of the brand. If companies could freely use the term SUPER BOWL to promote goods and services around the time of the big game and ride the Super Bowl promotional wave, perhaps the $3.7 million price tag for a 30 second spot in Super Bowl XLVII wouldn’t sell as well. So maybe the NFL is overzealous in its trademark protection strategy, but rather than defend, most advertisers use alternatives.
The Legal Work Around
Clever marketers skirt around issue with slogans such “Super Sale”, “Big Game Specials”, and other workarounds. Why? Because it gets the message across, and is more likely to avoid a vicious cease and desist letter and demand for royalties from the NFL. Although advertisers can in some cases successfully defend the use of SUPER BOWL under nomative use grounds, the cost of a legal defense is likely not worth the fight.
The NFL’s hyper-vigilant trademark enforcement, coupled with a reputation for litigation, helps maximize brand owners’ control over its exclusive trademarks. For any brand unauthorized use of its trademark or a similar version is alarming.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; firstname.lastname@example.org.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2015. All rights reserved.