January 23, 2014

The "Super" Trademark Strategy Behind "The Big Game"

by randymichels


More than 100 million people are expected to watch Super Bowl XLVIII on February 2, 2014. It is the most watched television event in the world. Last year, the game was seen by over 108 million people. Anthony Riccobono of the International Business Times says that number could be exceeded this year, as ratings for both the AFC and NFC Championship Games saw increased viewership.

This year's match-up between the Denver Broncos and Seattle Seahawks is hotly anticipated as it pits the NFL's best offense against its best defense. It also features two viral hits: Peyton Manning's "Omaha" audible call vs. Richard Sherman's freakout during his interview with Erin Andrews:

Peyton Manning: Master of Omaha Trivia

Richard Sherman: Not a Fan of Michael Crabtree

This is also a busy time of year for the NFL's trademark lawyers. The prominence of the Super Bowl makes it a prime target for unauthorized uses (both intentional and unintentional). According to Robert Channick of the Chicago Tribune, the NFL sends out 80 to 100 cease and desist letters to businesses advertising Super Bowl specials.

So what are the NFL's trademark lawyers protecting? The Super Bowl is protected by the following federally registered trademarks for various goods and services:

SUPER BOWL, U.S. Reg. No. 846,056

SUPER BOWL, U.S. Reg. No. 882,283

SUPER BOWL CONCERT SERIES, U.S. Reg. No. 2,133,100

SUPER BOWL, U.S. Reg. No. 2,954,420

SUPER BOWL, U.S. Reg. No. 3,138,590

SUPER BOWL, U.S. Reg. No. 3,343,714

The NFL also obtained a federal trademark registration for the Super Bowl XL logo:

[caption id="attachment_1188" align="aligncenter" width="190"]

Super Bowl Xl Logo
U.S. Reg. No. 3,373,804[/caption]

In addition, the NFL has federal trademark registrations for The Vince Lombardi Trophy, which is awarded annually to the winner of the Super Bowl. U.S. Reg. No. 983,550 protects the words the "VINCE LOMBARDI TROPHY", and U.S. Reg. No. 1,226,261 protects the configuration of the trophy:

Trophy
So how do you avoid becoming the recipient of one of the NFL's cease and desist letters? Unless you are an official sponsor, do not use the words "Super Bowl" to advertise any products or services. Instead, you should substitute "Super Bowl" with the "Big Game". This strategy was famously explained in this Samsung ad with Paul Rudd and Seth Rogen:

Interestingly, the NFL considered shutting down this workaround by seeking trademark protection for THE BIG GAME. In 2006, the NFL filed two federal trademark applications for THE BIG GAME covering everything from entertainment services to bumper stickers. In response, the U.S. Patent and Trademark Office issued Office Actions requiring the NFL to disclaim the word "game". The Office Actions explained:

A "disclaimer" is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.

The NFL agreed to the disclaimer, but ultimately decided to abandon the trademark applications. Perhaps the NFL saw the writing on the wall that it would be nearly impossible to enforce THE BIG GAME trademarks due to the disclaimer of "game". Until the NFL changes it mind, you are free to continue advertising your "Big Game" specials.