It’s been said that defense wins games, especially in THE big game and that proves true when it comes to protecting trademark rights as well.
For most people, the game on Sunday between the New England Patriots and Los Angeles Rams is the Super Bowl. But for many business owners, it simply has to be called the “big game” or just “game day.” While the Super Bowl provides many businesses a home-turf advantage on the marketing blitz that surrounds one of the most popular sporting events of the year, they have to be cognizant of their words because the National Football League has been notoriously protective of its trademarks.
The NFL trademarked the phrase “Super Bowl” in 1969 (Registration No. 0882283) for use in connection with “Entertainment services in the nature of football exhibitions.” Since then, they have Registered several other “Super Bowl” marks for use in connection with a variety of goods and services ranging from concerts to clothing to jewelry and souvenir items and more. Other National Football League owned trademarks include the league’s shield logo, team names, uniform designs and other popular NFL phrases. The “Pro Bowl” is similarly trademarked.
As stated in a previous article: “From the NFL’s viewpoint, if businesses use the NFL terms or other trademarks, it could appear like it is an official part of the Super Bowl or its related events. The NFL brand and the Super Bowl brand are incredibly valuable, but we are also working to protect our fans so they enjoy an authentic NFL experience and are not confused about the events and products they’re seeing,” said Dolores DiBella, one of the lead intellectual property attorneys for the NFL.
So, why is the NFL so aggressive? By playing appropriate defense and monitoring the Super Bowl trademarks as closely as they do, the National Football League is able to maximize revenue and uphold their valuable reputation as they have spent a lot of money to build the brand up. NFL’s enforcement is also about protecting the sponsors. The league creates “official” beers, chips, sodas and other items, which can give a business a distinct advantage over its competitors. Those “official sponsors” and other trademark licensees would not be willing to pony up the huge sums they pay if a competitor could freely use the “Super Bowl” trademark or the game to promote itself without also paying a license fee. This risk is particularly high for those who have been promised exclusivity in a given category and the right to promote themselves as “The Official (specific category) of the Super Bowl.” Thus, the NFL has a huge incentive to prevent any foul use of the marks that may cross the line.
There are other important intellectual property matters that businesses have to take into consideration for that Sunday game in February. Bars, restaurants and other establishments that have a public performance license to show television programs on their premises have the right to show the Super Bowl to its customers, but under copyright law, they can’t charge an entrance fee. They also can’t use the NFL logos or the words “Super Bowl” in its advertising to attract customers. Pictures of players cannot be used without facing legal action from the NFL and potentially the players themselves. Failure to adhere by their playbook could mean a corrective letter from the NFL.
Famously, in 2007, the NFL sent a cease and desist letter to an Indiana church group that had used “Super Bowl” to describe a viewing party for the game and would charge $3.00 per person to cover the cost of snacks. The NFL, however, will not object to a church viewing party for the Super Bowl if it is held in the church’s usual place of worship and no fee is charged for attending. Churches can, however, request donations to help cover the cost of the event. In addition, the League will not object to religious organizations that refer to their events as a Super Bowl party, provided that no NFL logos are used.
So, what is permitted? It is fine to use the term SUPER BOWL in news stories about the game and in conversations about the game. There is a trademark concept called “nominative fair use” that allows others to use a trademarked term when there is simply no better way to refer to it. But that concept does not extend to commercial use of the term.
The Super Bowl means big bucks as the NFL receives hundreds of millions of dollars in income from licensing the use of the SUPER BOWL trademark and logo. For this reason, not surprisingly, the NFL is extremely aggressive in protecting their rights from anything it views as unauthorized efforts to trade off the goodwill associated with the game. If the game plan isn’t to follow the NFL’s playbook, activities challenged by the league undoubtedly deserve a yellow flag.