This weekend’s Super Bowl ad from Samsung demonstrates the well known media taboo of using “Super Bowl” in your ads without the permission of the NFL. Here is the commercial:
As the actor Bob Odenkirk, attorney actor from Breaking Bad, suggests, “Super Bowl” is a trademarked term; however, there is a lot of confusion on this issue. It is not that you can not use the term at all, but even news broadcasters get away from using the term. Listen to the radio segment I discussed with Merrill on the topic.
Power of Trademarks
By the NFL establishing the Super Bowl as a trademark (see what is a trademark?), it has restricted the right or power for others to use the mark for their own commercial benefit (with some exceptions). The NFL is known to have exercised this power to such an extent, even where the term is allowed to be used, some uninformed parties avoid saying the term altogether as satirically illustrated in the Samsung commercial. For example, instead of saying Super Bowl, news broadcasters in small markets will use the term “the big game” as a pseudonym for Super Sunday (also trademarked). When using the term in a form of satire, comparison, or in this case descriptive or informative reporting, you are utilizing an exception called fair use.
Not Just for Big Business
Trademarks are not just for big businesses like the NFL. Imagine spending thousands of dollars on a brand that gets diminished or diluted by a competitor. Even though trademarking your brands, products, and services are important, the law only becomes useful if the owner is willing to defend the trademark. This makes the most sense where the trademark has actual value. At the same time, trademark protection planning usually occurs where the mark has little to no value.
Trademarks and Infringement Basics
A trademark is a symbol or words used to represent a company or product. This trademark may be established either by its use in the marketplace or its use plus registration with the USPTO. Once a trademark has been established it weighs itself with great power. The Super Bowl is a well established and registered trademark that the NFL has enjoyed with great liberty in defending against infringement.
What actually is considered trademark infringement is generally where an authorized party uses a symbol or words that creates a likelihood of confusion that goods or services are endorsed or are being represented by the trademark. The line gets more and more fuzzy in some cases, but generally the use of Super Bowl in commercial settings is likely not proper unless it is a form of satire, comparison, descriptive or informative reporting.
The NFL is very aggressive in defending its mark; some say too aggressive. Last year, the NFL pressured an Indiana man to give up his filing to trademark “Harbowl.” He had registered the trademark last year in anticipating the Harbaugh brothers (coaches of the San Francisco 49ers and Baltimore Ravens) going at it in the super bowl, but his hope did not come into fruition until this year in 2013; however, before it could ever happen, the NFL pushed him into dropping this quest at the threat of litigation. Even though this Indiana man may have been able to use his registration, he did not have the funds to defend. It is important lesson that your mark is only good if you actually enforce it.
Expanding your mark to other related terms is common and sometimes strategically beneficial. Believe it or not, the NFL in 2007 attempted to trademark “the big game” but withdrew its filing after facing a PR backlash as well as considering their filing would likely be opposed to others that have used “the big game” for their own use. The NFL did not stop though with the Super Bowl. Super Sunday is also a trademarked term of the NFL.