Harbowl, Super Bowl® and Mr. Roy Fox - A Lesson to be Learned, Again

Yet again, the NFL provides evidence of its aggressive efforts to protect both trademarks it owns and trademarks it doesn’t own.

With four minutes to go in the AFC Championship game and the Ravens looking good for a trip to Super Bowl XLVII®, I noticed that the hashtag #Harbowl was already blowing up on my Twitter feed.  That’s because a Ravens victory would mean that, for the first time in NFL history, two brothers – those would be John and Jim Harbaugh, of the Ravens and Forty-Niners, respectively – would be facing each other as head coaches in the Super Bowl®.  Look for “Harbowl” to become the unofficial moniker for the game.

Being a trademark lawyer geek, I immediately flashed on two thoughts: (1) how quickly could  I get an application on file with the U.S. Patent and Trademark Office (USPTO) to register “Harbowl” as a trademark (for hats, shirts, bumper stickers, temporary tattoos and all the other impulse items that NFL fans will be craving for the next two weeks); and (2) what are the chances that I could get that application granted?

Answer to Question One: I might be able to have an “intent to use” application on file before the game is done – it’s just that easy to file for trademark protection.  (Tip to readers: The ease of filing for such protection is a reason all of you should consider protecting your call signs, program names, slogans and other important brands by filing applications for federal trademark registrations.)

Answer to Question Two: “slim” and “none”, since – thanks to federal trademark law – I’d probably need the permission of the Harbaugh brothers to trademark something referencing their names. 

And that’s before the NFL has its say.

As we all know (at least those of you who have read my Super Bowl®-related posts for the last several years), the NFL has a reputation for ruthlessly enforcing its trademarks relative to the Big Game, even when it doesn’t happen to have any trademarks to enforce.  As it turns out, “Harbowl” graphically illustrates this.

Geek that I am, I searched the USPTO database for “Harbowl”.  Turns out I wasn’t alone in this thought, but I was about a year too late.  Back in February, 2012, Roy Fox of Pendleton, Indiana filed an “intent to use” application for “Harbowl” in conjunction with “hats; t-shirts”.  Mr. Fox’s application made it through the initial processing steps.  (I’m guessing that the USPTO examining attorney wasn’t a football fan and thus may not have recognized “Harbowl” as a reference to a Harbaugh v. Harbaugh Super Bowl®.)

But then the NFL stepped in. 

The NFL and NFL Properties, LLC each filed multiple requests for more time in which to oppose Mr. Fox’s application.   Those requests were granted, giving the NFL and NFL Properties, LLC until early November, 2012 to file their objections.  (The original due date for objections was in July, 2012).  For whatever reason, Mr. Fox abandoned his application for “Harbowl” on October 26, 2012.

I personally don’t really believe that the NFL has a legitimate beef about “Harbowl” because that neologism doesn’t create a likelihood of confusion – the legal test for trademark infringement – with any of the “Super Bowl” trademarks that the NFL owns. (I addressed some of those in last year’s post.)   “Harbowl” doesn’t incorporate other NFL trademarks like the Ravens’ or Forty-Niners’ names, logos (or, to be safe, colors), much less make any reference to “Super Bowl”.   

Even so, this underscores how aggressive the NFL is when it comes to asserting control over anything that could conceivably be related to the Super Bowl®.  (Shades of the “Who Dat” kerfuffle that arose in 2010!)  Because of that, all broadcasters should exercise extreme care when it comes to using NFL-trademarked words or logos – including, most obviously, the many uses of Super Bowl® – in any way that makes it appear that you have a connection with, or the endorsement of, the NFL. 

That means that you should not promote your contests with the words “Super Bowl” or anything resembling those words. Don’t promote events like game-watching parties.  Familiarize yourself with the list of NFL-owned trademarks, which include all team names and logos.  You may use those terms on-air, but only for news and information, not commercial or entertainment, purposes.  Don’t even accept advertisements from others using the term “Super Bowl” unless you have absolute certainty that the advertiser has a license to use the trademarked term.

(And as long as we’re on the subject, we’re giving you a couple months’ notice that the same applies to “March Madness” when the NCAA basketball tournament starts up in that month.  Ditto for most other recurring, high-profile events (e.g., the Oscars®, the Olympics®, etc., etc.))

As you can see from the way that they got right up in Mr. Fox’s grill at the USPTO, the NFL doesn’t mess around.  And while his encounter with the NFL probably cost Mr. Fox a mere $275 (that is, the extremely modest filing fee for his application –another reason you should consider applying for protection of your own marks), you might find yourself in a much more expensive predicament.  When it comes to trademark infringement claims, the NFL doesn’t just litigate at the USPTO; rather, they’ve shown an affinity for going to big boy court and seeking big time damage awards when it suits their needs.

So, we salute you, Mr. Roy Fox.  Not just for your creativity, foresight and entrepreneurial spirit, but also for the relatively inexpensive reminder you’ve given to broadcasters around the country.  The take-home lesson here: do NOT promote yourselves, your stations, your events or any of your commercial interests using the words “Super Bowl” or other NFL trademarks unless you have permission from the NFL to do so.  You CAN report on the game and/or events (including official NFL events) surrounding the game, but using NFL-registered trademarks for promotional purposes without permission can cause you a world of grief.

And a personal note to Mr. Fox: I hope you put your obvious foresight to profitable use.  When you applied for the “Harbowl” mark in February, 2012, the Ravens were around 14-to-1 and the Niners were about 20-to-1 to win the Super Bowl back then.  I’m sure the odds of both teams getting to the Big Game would have been astronomically higher, and any of those “prop bets” would have made you more money than selling t-shirts would in any event.

[And now for my annual prediction.  This is tough.  It’s going to be a great game, and I’m personally torn between the two teams.  On the Ravens side, I grew up in Maryland and know that a Ravens Super Bowl win will tick Redskins fans (and Redskins owner Dan Snyder, a megalomaniac in the eyes of many) off to no end, and I love that.  On the Niners side, I love SF, having split time between that city and DC for about three years and knowing many people that will be very happy about a Niners win.  But San Francisco already celebrated a World Series win in the past few months – their second in three years to boot – and I’m all for spreading the wealth.  (Plus I’m not sure the Mission can stand another championship celebration).  So you heard it here first: the Swami sees the Ravens over the Niners, 24-21.]

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Comments (8) Read through and enter the discussion with the form at the end
Dylan Carver - January 23, 2013 4:51 PM

I also spent all Sunday night thinking about clever names to mix Harbaugh and Super Bowl. I didn't think the NFL would be so strict. Do you think they would have any authority to prevent the use of Suphar Baugh?

Roy fox - January 23, 2013 8:48 PM

Mr.Goldberg

I read your article and apperciated your comments. I do wish I would have put bets on the two teams making it to the"big game", that would have been nice. As the saying goes hindsight is 20/20. Good luck on your prediction.

Kevin - January 23, 2013 9:29 PM

Dylan: I don’t even want to speculate as to whether you’d be able to slip “Suphar Baugh” by them. That opens us up to entertaining similar requests from everybody under the sun and, quite frankly, amounts to our providing legal advice on the likelihood of your success on the merits (which we explicitly will not do through this blog).

But I think it’s clear that the NFL has shown the inclination to protect their turf in this area and you could expect some kind of (potentially expensive) fight. Whether you fight back or capitulate at that time, writing off the filing fees as the cost of engaging in a speculative business venture, is your choice.

Kevin - January 23, 2013 9:33 PM

Roy: Thanks for your kind words and thanks for reading the article and commenting at all. After all, we're not ESPN. But I'm glad your story is coming to light and that, even though you eventually dropped your application, you're winning in the court of public opinion. Hopefully you help make the NFL think twice before going over the top again.

Camille - January 30, 2013 3:07 PM

Are hashtags subject to different rules? Or would "#superbowl" still be a trademark violation?

Kevin - January 30, 2013 3:58 PM

Interesting question. I've never seen an actual lawsuit on whether hashtags can give rise to a trademark infringement lawsuit but I wouldn’t rule it out. Here's what I'm pretty certain about: simply tweeting with the hashtag #SuperBowl isn't going to get you in trouble. But at the other end of the spectrum, the new "promoted tweets" service are clearly nothing more than advertisements and a promoted tweet (or anything that is clearly advertising) with #SuperBowl as a means of creating the impression that the NFL has endorsed or is connected with your event, seems no different than a TV, radio or print advertisement using the term, right?

#Ihopethatanswersyourquestionaboutthe#SuperBowl

Ted - January 6, 2014 7:23 PM

Tis the season, so I happen to be looking back on this post. Turns out you called the winner and spread last year: Ravens by 3. Nice one.

Kevin Goldberg - January 7, 2014 12:36 PM

Hmmm. Well, keep an eye out for this year's reminder as we get closer to the game. I'll endeavor a prediction but, based on my track record this year, you're warned not to rely on it (I got 1 of 4 right in the wildcard games this weekend).

It being a World Cup year, however, you can take my prediction on that event to the bank (because, as you'll see if that fact is the one that randomly shows up when you come to our home page at fhhlaw.com, I've corectly picked the last 3 winners of that competition).

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