Friday, February 5, 2016

The NFL’s Super Monopoly over the Super Bowl

The NFL obtained federal trademark protection for the mark “SUPER BOWL” on December 9, 1969. This registration secured a virtual monopoly for the NFL, granting it the exclusive right to use the mark “SUPER BOWL” in connection with football exhibitions. Individuals and businesses alike are therefore prohibition from using “SUPER BOWL” in any way which could be construed as an endorsement by or affiliation with the NFL.
  In 2008, the NFL made headlines when it sent a letter to the Fall Creek Baptist Church in Indianapolis demanding the church cease and desist from advertising its “Super Bowl Bash.” The result was that groups hosting parties for the “Big Game” have had to turn to more creative means of advertising, without using the term SUPER BOWL.

Stephen Colbert poked fun at the NFL’s aggressive protection of its trademark prior to the 2014 Super Bowl, jesting that he would get around having to use their trademark on “Super Bowl” by instead providing coverage of the “Superb Owl.”

So why is the NFL so adamant about enforcing its exclusive rights to its trademark on “SUPER BOWL?” There are two central reasons, but they both come down to money. The first is that the NFL must protect its trademark from dilution. There are two types of dilution described in the Trademark Dilution Revision Act of 2006: Dilution by Blurring, which occurs when the distinctiveness of the famous mark is impaired; and Dilution by Tarnishment, which is where harm is done to reputation of the famous mark. For a trademark owner, either form can spell disaster. The NFL depends on revenue it receives from advertisers that battle over who will be the official sponsor of the Super Bowl. If the reputation of the Super Bowl were diminished, so would the demand to have one’s brand advertised in conjunction with it.

The second reason is that it needs to remain the exclusive rights holder in order to keep its monopoly on the advertising revenue over all things Super Bowl. When a trademark owner allows others to freely use their trademark, it can lose its significance as a mark, no longer holding any meaning as a source indicator. This is known as abandonment or “genericide” (
15 U.S.C. § 1125). For example, the Bayer pharmaceutical company formerly held a trademark on the name “ASPIRIN” to refer to its drug, acetylsalicylic acid. But over time, the public’s generic use of “ASPIRIN” to refer to the drug caused the mark to be declared abandoned.

The result is that the NFL has no choice but to strictly enforce its trademark rights because the mark’s value comes from the fact that others can’t use it without permission. If “SUPER BOWL” was used freely by the public, it could ultimately succumb to genericide. 

But giving the NFL exclusive control of the phrase “Super Bowl” creates a problem for those who are simply looking to talk about the sporting event, not advertise or profit from it. This is where an exception to trademark rights known as nominative fair use comes into play.  
Nominative fair use is essentially the idea that using another’s trademark in a way that does not imply sponsorship or endorsement by the trademark holder is acceptable (New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 307 (9th Cir. 1992)). This provides narrow protection for individuals such as newscasters and commentators that want to say “Super Bowl” for the ease of communication rather than to imply a sponsorship or endorsement by the NFL. For example, it would probably be a nominative fair use to announce “the Super Bowl is next Sunday,” but it would probably be infringement to announce “our Super Bowl Extravaganza is next Sunday.” 

This is just one example of how powerful a trademark registration can actually be. The exclusive rights a federal trademark registration grants its owner can be leveraged to produce tremendous profits. A trademark registration can be obtained for words, phrases, symbols, designs, and more. For additional information about trademarks please visit the United States Patent and Trademark Office (UPTO) website. 
While the USPTO is an excellent resource for information regarding trademarks, it is not permitted to provide specific legal advice related to your individual or business needs. The USPTO recommends contacting a private attorney who specializes in intellectual property for assistance with your specific needs.

If you have any questions about this or any other trademark, trade secret, or copyright matter, contact the Intellectual Property attorneys at Brown, Paindiris & Scott at 860-659-0700 or rvongootkin@bpslawyers.com.