On Super Bowl Sunday, some people tune in to watch the Big Game, while others tune in for the flood of creative commercials. This year, Samsung decided to use this as an opportunity to poke fun at itself, the NFL, and teach viewers a lesson in trademark law.
In one commercial, actors Paul Rudd and Seth Rogen meet with a Samsung official about being spokespeople for the new Galaxy phone. After the businessman asks them for ideas, the actors try to offer suggestions but are quickly shushed from uttering the words, “Super Bowl,” “Ravens” and “49ers.” Ultimately Rudd and Rogen have agreed to sponsor the Galaxy phone during the “Big Plate” where the Baltimore “Black Birds” will be playing the San Francisco “Fifty-minus-oners.”
This was a tongue-in-cheek reference to Samsung’s patent infringement case against Apple, but is also indicative of another field of Intellectual Property- trademarks. So why could the actors not utter these three key words? This is because the National Football League owns the trademark for Super Bowl. In fact, the NFL owns eight registered trademarks to protect this word and associated references, including trademarks for the words, “Pro Bowl” and “Super Sunday.” This protection enables the NFL to take legal action against any third party using “Super Bowl” to sell goods or services. This includes using the term in any advertisement or promotion that has not been sanctioned by the NFL, including sweepstakes and contests. The reason why this protection is important to the NFL, is because advertisers pay enormous licensing fees for the right to use the term, “Super Bowl” and these terms would lose their economic value if every one could use it.
The NFL vigorously protects their trademarks, and will pursue legal action against third parties or pressure third parties to abandon similar marks. Last February, Roy Fox registered the terms “Harbowl” and “Harbough Bowl” after realizing that he could profit if the two brothers faced each other in the Super Bowl. Unfortunately, after spending $1,000 to register the marks, Fox received a letter from the NFL stating that “Harbowl” could be confusingly similar to the registered mark of Super Bowl and was asked to abandon his marks. Though Fox offered to abandon the marks in exchange for the NFL to reimburse him for the cost of registering the marks, some Colts season tickets, and an autographed photo of league commissioner Roger Goodell, the NFL refused and threatened to oppose his trademark registration. Though there is some debate about whether the NFL could have been successful if it pursued legal action, on October 24, 2012, the man abandoned his marks.
So why can I refer to the Super Bowl in this post? A person may use a trademarked word for news stories, discussions, and nominative fair use. This allows third parties to use a trademarked term when there is no other way to refer to it. The mark may only be used to the extent necessary to identify it, and it cannot suggest a false connect or sponsorship to the trademark holder. However, it is important to know that nominative fair use does not extend to commercial use. If I used the word Super Bowl to sell pizza, then this would be an infringement. Many advertisers avoid infringing on the trademarked term Super Bowl, by referring to it in abstract terms like, “The Big Game,” or Samsung used creativity and humor.
Now that Samsung has dodged the bullet by referring to the Super Bowl as “El Plato Supreme,” I am excited to see how they will have Rudd and Rogen avoid using other trademarks such as “March Madness.”