29.1.17

Super Bowl related Promotions & The Risk of Infringing NFL Trademarks



Image source: NFL 

The Super Bowl is arguably the most anticipated and watched event on American television and is scheduled for this coming Sunday, 05 February 2017. The fixture is organised by the National Football League (NFL) and has been running since 1967. [1] The name & phrase "SUPER BOWL" is a registered trademark owned by the NFL, an organisation which is very protective of its lucrative intellectual property and aggressively pursues any uses it deems as unauthorised.

The use of the phrase "Super Bowl" is a right reserved only by the NFL as well as its partners, advertisers & sponsors who have purchased a license to use the trademark. The NFL currently receive over $1billion in income from licenses related to the Super Bowl. [2] Any unauthorised use of the 'Super Bowl' trademark, that goes unchallenged by the NFL, can significantly diminish the mark's value.


What is a trade mark?


Trademarks are known as a 'badge of origin' and can have great economic value to it's holders.

A trademark is defined as being 'any sign capable of being represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of other undertakings.'

Trademarks can take a number of forms including logos, badges, phrases and distinctive patterns & designs, such as the five golden rings associated with the Olympics.

The registration of a trademark provides the owner with an enforceable property right regarding improper use. Any infringement of a trademark allows the owner to claim compensation from the infringer (e.g. the profits earned from the selling of goods) and request an injunction prohibiting them from further use of the trademark, along with handing over any counterfeit goods.

What is the purpose of a trademark?


The purpose of a trademark is to allow the consumer to associate the origin of a product or service, without any possibility of confusion. Its use provides the consumer with a guarantee of its association. It prevents others from exploiting the reputation and commercial success of the owner (in this case the NFL) by using the mark without authorisation.

Owners of trademarks are usually provided with two specific forms of protection -

(1) prohibition of unauthorised copies of the owner's trademarks from being produced and marketed on goods and;

(2) attempts to confuse consumers by the use of a design similar to a registered trademark or by using a registered trademark on goods similar to those currently being produced by the owner, are prohibited, e.g. counterfeit merchandise sold on stalls around stadiums by independent merchants.

Therefore, by trademarking the phrase "Super Bowl" the NFL is protecting its intellectual property as it can enforce its rights and protect the consumer from confusion about whether a promotion/event/product is officially connected with the NFL. It is also allows the NFL, of course, to profit from the brand by issuing licenses, for a fee. The authorisation to use the phrase "Super Bowl" is thus very valuable to those who have obtained the right through a licence, and of course the NFL who monetise the brand.

Capitalising on the 'Super Bowl' trademark, without permission

 
Given the popularity of the event, in the run-up to the game many businesses will attempt to capitalise on the brand with a wide variety of different types of advertising from venues to watch the game to supermarkets encouraging customers to stock up on match-day grub. It is important, however, for businesses when publishing ads to exercise utmost caution and refrain from using the phrase "Super Bowl" unless they have obtained permission from the NFL to do so, by way of a license. 

The NFL considers any commercial activity that uses or refers to the Super Bowl, in order to draw attention to a particular brand or venue, as a violation of its trademark rights and is quick to issue cease and desist letters. For example, the NFL hit the headlines, one season, for actively pursuing a church who was intending on showing the game, without the required license.

Any such claim can be made against the advertiser directly as well as a broadcaster/media outlet who publishes or airs the ad - it is now the case that many broadcasters will not publish or air ads without evidence that the use of the trademark is authorised by the NFL. As a result of the above, in order to avoid possible infringements and subsequent legal actions, many advertisers now opt for the use of alternative phrases such as "The Big Game' or 'Match Day' - note the phrase "Super Sunday" has also been registered as a trademark by the NFL so that also cannot be used by advertisers during promotions.

When it became apparent that many advertisers were using "The Big Game" as their catchphrase to advertise events/promotions related to the Super Bowl, the NFL attempted to register "The Big Game" as a trademark with the United States Patent and Trademark Office (USPTO). However, numerous parties threatened to oppose the application and the NFL, thereafter, voluntarily abandoned its attempts to trademark the phrase in 2007.[3]

Use of a registered trademark, without authorisation, is deemed to be okay if the use does not suggest a relationship between the user and the trademark owner. This is referred to as nominative fair use. For example, informational pieces of content, such as this blog post or news & commentary, are not barred from mentioning the Super Bowl.

Advertising & Activities to be aware of when using the NFL's trademarks include:

  • Hosting of "Super Bowl" parties/events and incorporating the trademark into your advertising
  • Venues that show the broadcast of the game can only do so with a public performance license. They also cannot charge a fee to watch the game under copyright rules. In the event that a bar/restaurant has obtained the required license, they are still barred from using the "Super Bowl" trademark in any advertising for the venue, without prior permission from the NFL.
  • Sweepstakes or giveaways that incorporate "Super Bowl" in the name
  • Broadcast of pre-match specials that incorporate "Super Bowl" into the title

As you can see, the NFL takes the protection of its intellectual property very seriously and  aggressively pursues any infringements. Business should be aware of IP rules and if you are not sure about using the mark or not, my best advice would be to err on the side of caution and opt for an alternative phrase.

IMPORTANT: This post is not intended to be a legal briefing, it is not intended to be a statement of the law and no action should be taken in reliance on it without specific legal advice.

References:

1. Michael M. Fenwick, Football's Intellectual Side: The NFL Versus Super Bowl Parties and the Story of the Fifty-Five
    Inch  Television, 4 J. Marshall Rev. Intell. Prop. L. 125 (2004)
2. David Oxenford, As the Golden Super Bowl approaches, be aware of the NFL's efforts to protect its golden goose from 
    unauthorised ads and promotions.
3. Ibid

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