[NEohioPAL] There are Few Trademark-Free Alternatives for Advertisers at Super Bowl Time

[Mary Ellen Tomazic]

       Every commercial advertiser and broadcaster, as well as members of
the public, are aware by now that the term “Super Bowl” is a trademark
owned by the National Football League, and can only be used by those who
pay for the privilege. “Super Sunday” is also part of the NFL’s
intellectual property, and both are registered in the Patent and Trademark
Office – “Super Bowl” in December 1967, and “Super Sunday” in August 1986.
Even though both phrases are made up of merely descriptive or “generic”
words, they now are “famous marks” possessing “secondary meaning”, making
them incontestable under the Trademark laws.

        The Trademark laws are codified as part of the federal Lanham Act,
15 U.S.C. Chapter 22. The system is based on use of words, phrases and
images in commerce to identify the source of goods or services. Since
trademarks are perpetual as long as they are used in this way, the laws
have strict requirements to be able to be used exclusively by an owner to
distinguish their goods from those of others. Trademarks, to be registered
and protected on the Principal Register (15 U.S.C. § 1051) must be
distinctive, and have a strong identification with the goods or services
they represent. Protection can be given to trademarks in a range from weak
(generic) to strong (fanciful). The weakest marks are words that are merely
descriptive, and these cannot be protected because it would prevent their
general use in the language. However, weak marks with generic-leaning words
can be protected after a period of five years of exclusive and continuous
use as a mark if they have become distinctive in connection with the
applicant’s goods. Weak trademarks may be placed on the supplemental
register (15 U.S.C. § 1091) if they are capable of distinguishing the
applicant’s goods but are not distinctive enough to be registrable on the
Principal Register. Then if, as a result of its use after five years with
no successful contest by others, the mark is so strongly associated with a
product or service that it becomes distinctive and acquires secondary
meaning, it will be able to be registered on the PTO’s Principal Register
and become incontestable by others attempting to register the mark. The NFL
registered the term “Super Bowl” on the Principal Register in 1967. It was
first filed as the name of a board game in 1966 on the Supplemental
Register, assigned by the NFL to another party, and has been renewed twice
since then. Super Sunday was first registered on the Supplemental Register
as a service mark for the football game itself in 1986, and it is still on
the Supplemental Register today, having been renewed by the NFL twice.

        With that background, the NFL enforces its “Super Bowl” mark very
aggressively, hunting down and squelching all uses of the phrase in
advertising by companies which have not paid their high licensing fee.
“Super Sunday” gets the same exclusive treatment and cannot be used in
advertising without a license. Under the Lanham Act, trademark owners also
have the right to refuse to grant a license to use their mark for other
reasons, such as uses which disparage their mark or dilute its meaning.
Association with “unsavory” or inferior products or services could hurt the
reputation of the NFL built up over many years as “family entertainment”.
Mostly, however, the NFL is protecting its revenue, and given Americans’
love of professional football, which generates billions of dollars in
advertising, it is understandable that the NFL protects its lucrative
marks.

        The National Football League has stopped the use of their
trademarks not only by advertisers selling  products like chips and beer to
be consumed on “Super Sunday” during the watching of the game, but by bars
and restaurants from advertising “Super Bowl parties” at their
establishments. The NFL also owns the copyright to the games themselves,
and has disallowed any establishment charging an admission fee to see the
game, though the venue is allowed to sell food and drink during the
watching of the game, as long as it is on less than a 55 inch screen.

         Some alternatives have been regularly used to describe the game in
advertising without using the trademark words in sequence. Ads mentioning
“the Big Game” are probably the most prevalent; “Super Week” is another
alternative that gets a lot of use by non-paying Super Bowl game
advertisers. A phrase coming dangerously close, heard on local radio, is
“make your game experience super.” Local and smaller advertisers often
attempt to circumvent the Super Bowl and Super Sunday trademark
restrictions, and probably would get away with “close calls” since the
revenue involved is miniscule in comparison to products advertised
nationally. Companies such as Papa John’s Pizza, Frito Lay and Budweiser
beer pay millions for the right to be “official” Super Bowl sponsors and
use the trademarked phrases.

     With the global reach of the internet, cable TV, and radio these days,
any advertiser would be wise to shy away from similar uses of the words
“Super”, “Bowl” and “Sunday” in their campaigns associated with with the
professional football championship game, because the NFL will track you
down and stop you if you have not been granted the right by license.



© 2012 Mary Ellen Tomazic
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