By Cody Wilcoxson*
You may have heard your local grocery store advertising sales for chicken wings and soda for the Big Game happening on Sunday. Maybe you were watching television this week and saw an advertisement for a Championship Game special at a restaurant or bar. Understandably, you might be wondering: Why don’t they just call it the Super Bowl?
The answer is simple: The National Football League owns the trademark to “Super Bowl,” “Super Sunday,” and seven other federally registered trademarks containing the word “Super,” and the League takes the protection of its trademarks seriously.[i] The NFL has owned the trademark for “Super Bowl” since December of 1969 and holds its exclusive rights for “entertainment services in the nature of football exhibitions” which encompasses use of the mark “in commerce for purposes of advertising, marketing, and promoting its event.”[ii] The strict policing of trademark infringement has driven the advertisement value of the name and the event to incredibly lucrative levels. [iii] The 49th edition of the Super Bowl last year between the New England Patriots and the Seattle Seahawks attracted the largest television audience in U.S. history and netted $4.5 million per 30-second advertisement aired during the game.[iv]
The NFL’s rights to protect its mark are granted by the Federal Lanham Act, which has the primary purpose “to protect customers from confusion in the marketplace.”[v] The legal has two legal remedies for improper usage of the “Super Bowl” and other “Super” trademarks through 15 U.S.C. § 1114, which allows remedies for trademark infringement under § 32(1) of the Lanham Act, and 15 U.S.C. § 1125(a), which allows claims for unfair competition under §43(a) of the Lanham Act.[vi]
Trademark infringement occurs whenever, without consent of the registrant, a person uses in commerce “any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.”[vii] The test for determining infringement is the likelihood of consumer confusion.[viii]The confusion test is not limited to just the product or mark itself, rather uses of a trademark that “suggests an affiliation or connection with a trademark owner, or that causes a likelihood of confusion as to sponsorship or endorsement, also constitutes infringement.”[ix] Courts have established many factors to determine what constitutes the likelihood of confusion, for example, the Third Circuit (covering Pennsylvania) has adopted the “Lapp” factors, a non-exhaustive list for consideration.[x]
Here, the NFL is mostly concerned with public perception that brands that would use “Super Bowl” in their advertisements are affiliated with the League. That is why the League’s team of lawyers sends cease-and-desist letters to anyone advertising with the “Super Bowl” moniker, even going as far as to send a letter to Fall Creek Baptist Church for promoting its “Super Bowl Bash” in 2007.[xi] While this may seem overzealous, the point is clear: the League will protect its right to use and license its billion-dollar mark from individuals and brands both big and small.
The League went so far as to file a trademark application for “The Big Game” in 2006 to prevent advertisers from using the generic term to associate with the success of the Super Bowl.[xii]However, after challenges from the University of California, Berkeley and Stanford University, whose football teams play annually in what their fans have called “The Big Game” for more than 100 years, and mounting challenges from companies such as Wal-Mart, Taco Bell, Pizza Hut, and Anheuser-Busch, the League abandoned its application.[xiii]
Before you frantically start trying to remove “Super Bowl” from your lexicon, understand that you, your local television reporters, and just about everyone else is free to use the term under the protection of “nominative fair use.”[xiv] This defense of trademark infringement requires three things:
So, while advertising brands are thinking of creative ways to skirt the name “Super Bowl,” feel free to use the phrase, make a prediction, and enjoy the game.
*Staff Writer, Villanova University Sports and Entertainment Law Society Blog; J.D. Candidate, May 2018, Villanova University School of Law.
[ii] See Crystal Marie Prais, “The Big Game: The Effect of the NFL’s ‘Super Bowl’ Trademark on New Jersey Businesses and Consumers,” Rutgers Business Law Review (Spring, 2014), 11 Rutgers Bus. L. Rev. 99
[xi] See Brianne Pfannenstiel, “Don’t Say Super Bowl,” Kansas City Business Journal (Jan. 31, 2014), http://www.bizjournals.com/kansascity/news/2014/01/31/dont-say-super-bowl.html; see also Prais, supra note 2
[xii] See Tom FitzGerald, “NFL sidelines its pursuit of Big Game trademark,” SFGate.com (May 23, 2007), http://www.sfgate.com/bayarea/article/NFL-sidelines-its-pursuit-of-Big-Game-trademark-2573935.php
[xiv] See Kevin Goldberg, “If You Play Your Cards Right, You Can Cover the Game and Steel be Super,” CommonLawBlog (Jan. 23, 2009), http://www.commlawblog.com/2009/01/articles/broadcast/if-you-play-your-cards-right-you-can-cover-the-game-and-steel-be-super/