The Bong Bowl, the Super Bowl® and Mr. Joel Rodgers

Our annual reminder about NFL trademark enforcement

This year’s Roy Fox “I Coulda Been Somebody” Award goes to (drum roll, please) – Joel Douglas Rodgers of Tampa, Florida.  Our readers will recall that, last year about this time, I reported that one Roy Fox had applied for a trademark registration covering the mark “Harbowl”, a mark which – had he obtained it – could have been a gold mine for him once the teams for last year’s Super Bowl® were set.  (I’m still waiting for ESPN to call to apologize for not giving me and CommLawBlog our due credit for breaking the story.) Both of last year’s teams – the Niners and the Ravens, for those of you with short-term memory about such things – were coached by gentlemen named Harbaugh, so the desirability and commercial potential of “Harbowl” was obvious.

Also as I reported, though, the NFL made a bunch of threatening noise about Mr. Fox’s application and thereby convinced him to abandon it.  My point was to remind one and all that the NFL is super-aggressive when it comes to asserting control over anything that could conceivably be related to the Super Bowl®.  (Don’t forget that R-in-a-circle!)  Because of the NFL’s strong-arm approach, we annually warn folks to avoid using the term “Super Bowl®” in any way that might likely create an impression that their product or event is authorized or endorsed by the NFL.  (Check out a collection of our Big Game-related posts here.)

So who is Joel Douglas Rodgers?

It turns out that, in June, 2012, Mr. Rodgers applied to register the trademark “Bong Bowl”.  So what?  So this: The teams in this year’s Super Bowl® – the Seattle Seahawks and the Denver Broncos – both happen to hail from states which have recently legalized marijuana.  As a result, multiple drug-related nicknames for the big event have been suggested by members of the Great Unwashed:  Weed Bowl, Stoner Bowl, Reefer Bowl, Super Oobie Doobie Bowl, Smoke-a-Bowl, etc., etc.  You get the idea.

We don't know whether his application had anything at all to do with the NFL's premier event.  But  “Bong Bowl” could have been a major league money-maker, particularly since Mr. Rodgers, in his application, proposed to use the term on “athletic apparel”, including sweat shirts (hooded and otherwise), tee shirts, hats, caps and other such merch. Who wouldn’t be proud to sport a Bong Bowl hoodie to the nearest sports bar on Game Day?

The good news is that, at least as far as USPTO records show, the NFL didn’t oppose Rodgers’s application, maybe because the possibility of a Dope Bowl pitting two weed-approving venues against each other wasn’t on the NFL’s radar back in 2012. 

The bad news is that that possibility apparently wasn’t on Rodgers’s radar, either: he abandoned his application in August, 2013, just before the current season cranked up. 

Had he toughed it out and then tried to market “Bong Bowl” merchandise, the NFL would have been in a difficult spot. 

On the one hand, in view of its historical tendency to bogart any and all terms even mildly reflective of the Super Bowl®, the NFL might have been all over Rodgers like a cheap suit, insisting he back off and let the NFL reap the profits. 

But on the other, the NFL’s substance abuse policy prohibits pot use, so the League might not have wanted to get hooked up with a product that could be seen as promoting just such use.  (That may also be why the National Anthem at this year’s Super Bowl® is being sung by opera superstar Renée Fleming and not the Doobie Brothers, and why the half-time entertainment is Bruno Mars and not James Blunt or Snoop Dogg/Lion, joined by a hologram of Bob Marley, singing the scat improvisation from Frank Sinatra’s “Strangers in the Night”.)

In any event, our message this year is the same as last year: Don’t be a dope and risk having your hard earned revenues go to pot.  We don’t even have to get into the weeds of trademark law to avoid making a hash of this situation.  Before you use the words “Super Bowl”, any NFL team names, any NFL team logos, or any NFL trademarks of any kind – or anything resembling them – between now and the game, ask yourself this one question: Am I using it in a way that is likely to create an impression that my product or event is authorized or endorsed by the NFL? 

If you’re confident that your use is more rationally related to reporting on or about the game, you should be OK – but understand that the NFL is likely to be skeptical about your claim, so be “super” sure.

Of course, everything – including those too-cute variations on “Super Bowl” – has to be analyzed in its own context, so you may want to discuss any potential uses with your attorney beforehand.  An understanding of how the law might apply to any ideas you may come up with should help.  We’re just trying to help you stay on the high side of the law.

And remember, it’s not just the NFL you have to be worried about.  Every year, people get tripped up by their unauthorized use of “March Madness”.  Every two years it’s “Olympics” (most often by simply throwing “-lympics” on just about anything).  And every four – including this year – FIFA gets pretty darned protective about “World Cup”. 

So when it comes to ads or promotions that might violate these strongly protected marks, take a tip from Nancy Reagan: Just Say No!

P.S. – Because I’m the Swami and I make predictions, I’ll go ahead and provide my annual prognostication about “The Big Game”.  My Gold Medal prediction for the Meadowlands:  Denver 37, Seattle 24. 

P.P.S. – You should know that my record in picking NFL games this season was pretty mediocre (about 48% correct).  I haven’t done much better in the post-season, boasting a 4-5-1 record. But last year I accurately picked the winner and predicted the three-point spread right on the button.  And if you’ve ever been lucky enough to hit the FHH home page at the right time, you’ll know I’ve correctly picked the winners of the last three World Cup tournaments.  Bonus unofficial prediction: with the caveat that it’s early, things can change and I have to see just how the various teams look closer to the tournament in Brazil, I’m leaning toward Argentina.

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.]

Super Bowl® Trademarks: By the Numbers

[Blogmeister’s note: Kevin Goldberg, our resident Swami when it comes to predicting Supreme Court decisions, is also our guru (Swami? Guru? Yes, he’s that multicultural) for all things trademark. Since it’s That Time Of The Year, we asked him to re-visit the NFL’s perennial effort to control the use of the term “Super Bowl®”. The Swami initially larded his response with tons of references to Tim Tebow in a transparent attempt to attract all kinds of hits to his post. But we’re obviously above the kind of cheap ruse that would depend on repeated use of the name “Tim Tebow” to improve CommLawBlog®’s hit stats. Accordingly, we have edited out of Kevin’s post the name “Tim Tebow” (who plays for the Denver Broncos® – who aren’t even playing in the Super Bowl® this year. Everybody knows it’s the New York Giants® and the New England Patriots®, featuring Tom Brady).]

Football is a game of numbers. Here are some interesting Super Bowl®-related numbers for you:

455      The number of trademark applications that have been filed listing the “National Football League” as the applicant/owner

141      The number of federally registered trademarks owned by the “National Football League”

9          The number of trademarks containing the word “Super” that are owned by the National Football League

11        The number of international classes in which these trademarks exist

Ideally you’ve figured out by now that this post serves as our annual reminder – for the fourth year running – that the National Football League takes its trademarks very seriously. The league uses those marks to protect its exclusive right to use the term “Super Bowl®”. As the NFL®  sees it, that right extends not only to the game itself, but also to a mind-numbing range of stuff from clothing to jewelry to party invitations/napkins/decorations/posters to sporting goods to a concert series to things like . . . television broadcasting services.

Close examination of available records indicates that the scope of the NFL®’s trademark protection does not appear to include parties, restaurants, bars or contests. As a result, one might legitimately wonder whether the NFL® really has the strength it claims in threatening legal action against anyone using the term “Super Bowl” in promoting their own events (assuming you could do so without infringing the NFL®’s trademarks with respect to goods and services that it has protected). But there’s no doubt that the league (like the owner of our local Super Bowl-averse franchise here in DC), has never been shy about threatening legal action and certainly has the money to back it up. 

Better safe than sorry we say, so we’ll reiterate our advice from last year:

The NFL has registered several trademarks, many of which you might feel inclined to use when you’re referring to the Event-Of-Overriding-National-Importance-That-Shall-Not-Be-Named. These include: the expressions “Super Bowl®”, “Super Sunday®”, “National Football League®”, “American Football Conference®” “National Football Conference®”, “NFL®”, “AFC®”, “NFC®”. The NFL  also holds a registration on the Super Bowl logo, and all team names, uniforms and logos.

With that in mind, one should NOT use any of these terms or images in a way that falsely connotes any connection to the league, the game or the teams, especially if that occurs in conjunction with the promotion of any event, contest, or other activity not sanctioned by the league.

On the other hand, one MAY use those terms and images in a legitimate news story, factual recitation or commentary about the game, before or after it occurs. One MAY also use other, generic terms which have not been registered as trademarks including the all-time favorite alternative, i.e., “The Big Game” (although several years ago the NFL® took an unsuccessful stab at registering “The Big Game”). One MAY also use the names of the cities whose teams are competing in the game (without using the team nicknames).

And, as we’ve said before, the same considerations apply to lots of other prominent sports- or entertainment-related trademarks, so consider all of this equally applicable to events such as the Oscars®, March Madness®, and the Olympics®. (Helpful practice tip: The IOC is another entity not shy about asserting its legal rights.)

Finally, since this post is all about the number and because I am the Swami, I’d be remiss if I didn’t offer a prediction on the Big Game. (This is, of course, for entertainment purposes only):

Patriots: 34 

Giants: 28

Take that with a grain of salt, since the Super Bowl® is generally the only game I watch in its entirety each year, and those 60 minutes are probably more football than I watched in the previous 20 weeks. You want a real prediction for Sunday, February 5? Chelsea: 1, Manchester United: 3. Glory, Glory Man United!

[Blogmeister’s note: “Multicultural” only begins to describe him . . .]

Coming Soon: The Event-Of-Overriding-National-Importance-That-Shall-Not-Be-Named

 Heads up – the NFL is watching you . . .

It’s time for that most evergreen of January stories: the annual reminder that you have to be careful about using the words “super” and “bowl” together in any way. That’s because the NFL is on the look-out for “unauthorized” uses of its registered trademarks, and one of those trademarks happens to be “Super Bowl®”. We put “unauthorized” in quotation marks here because the No Fun League has a somewhat (how can we say this delicately?) expansive view of its own ability to prevent anybody from uttering those two words – a view which is not universally shared.

The League’s position, as far as we can tell, is that pretty much any non-news use of the Two-Word-Phrase-That-Shall-Not-Be-Spoken necessarily implies an affiliation with the NFL. To the NFL, this in turn apparently means that the NFL is absolutely entitled to control who can utter the Unutterable Phrase and when It can be uttered. Whether that view is supported by, say, the law is far from clear. (But, as Gene Pitney once cogently observed, in some instances “a law book [does] no good.”)

However the law might stack up on this, it’s probably best to view the NFL as you would the obnoxious loud-mouth jerk down at the other end of the bar who’s had a few and is loudly insisting that his knowledge of sports trivia is superior to everybody else’s. Maybe he’s right, maybe he’s not – but who wants to bother to find out?

So here’s what you need to know.

The NFL has registered several trademarks, many of which you might feel inclined to use when you’re referring to the Event-Of-Overriding-National-Importance-That-Shall-Not-Be-Named. These include: the expressions “Super Bowl®”, “Super Sunday®”, “National Football League®”, “American Football Conference®” “National Football Conference®”, “NFL®”, “AFC®”, “NFC®”. The NFL also holds a registration on the Super Bowl logo, and all team names, uniforms and logos.

With that in mind, one should NOT use any of these terms or images in a way that falsely connotes any connection to the league, the game or the teams, especially if that occurs in conjunction with the promotion of any event, contest, or other activity not sanctioned by the league.

On the other hand, one MAY use those terms and images in a legitimate news story, factual recitation or commentary about the game, before or after it occurs. One MAY also use other, generic terms which have not been registered as trademarks including the all-time favorite alternative, i.e., “The Big Game” (although several years ago the NFL® took an unsuccessful stab at registering “The Big Game”). One MAY also use the names of the cities whose teams are competing in the game (without using the team nicknames).

Enough lawyering, though.  Let’s enjoy the Big Game (as we twiddle our thumbs awaiting March Madn  – wait, that’s trademarked by the NCAA. Oh well.)

NOLA to NFL: Who Dat ® Your Daddy?

NFL backs off trademark claim to "Who Dat"

We weren’t the only ones who weighed in on the NFL’s questionable decision to claim trademark rights in “Who Dat”. As we reported, Senator David Vitter was all over the issue like a cheap suit, as was Louisiana Governor Jindal and his Attorney General Buddy Caldwell, according to reports here and here (among others). And the winners in the beat down are: common sense, reason, the Who Dat Nation, and just about everybody but the NFL.

Of course, the NFL couldn’t just cowboy up and fess up to a mess up. No, it sniffed that it wasn’t really trying to stop the widespread use of “Who Dat” – rather, it was just trying to prevent use of that phrase “only if a Who Dat item also contained NFL or Saints trademarks or if it is falsely claimed that an unauthorized item is affiliated with the Saints or NFL”, according to an MSNBC report.

Wait a minute. The Wall Street Journal’s WSJ.com reported that in late January the NFL had filed in Florida to register (under Florida’s local trademark laws) the expression “who dat” on apparel. And the Journal quoted the NFL’s blunt instrument cease-and-desist letter as saying that using “who dat” is likely to “confuse the purchasing public into believing” that items with the slogan are sponsored by the NFL. The Journal also quoted an NFL rep as saying that for 20 years the NFL has been “using and enforcing its rights in the ‘who dat’ mark to refer to Saints football”.   So the latest spin they’re trying to apply to their problem appears to be, well, spin.

Be that as it may, reason has apparently prevailed here, so now we can get back to the matter at hand: getting ready to stuff ourselves beyond belief on food and alcohol while a bunch of overly large men beat each other senseless.

And, we’ll remind you yet again, that the NFL does have a valid, registered trademark in the term “Super Bowl” and will, if prior experience is any indication, continue to prosecute unauthorized uses of that term to the fullest extent possible.

Who Dat ® Own Dat Trademark?

The NFL illustrates our point, again.

A couple of days ago we ran our annual alert about the fact that some folks – large professional sports organizations in particular – seem to be trying to take control of our language by registering as trademarks just about every word or phrase in sight . . . and then telling us we have to pay to use those words and phrases. For those who may not have believed us, check this out: reports out of New Orleans indicate that the NFL is claiming that “Who Dat” – long the catch-phrase of the Super Bowl-bound (oops, make that Super Bowl ®-bound) Saints, and before that a staple of minstrel shows and vaudeville acts back into the 1800s – is a registered NFL trademark. 

According to those reports, the NFL has gone after local Big Easy tee-shirt vendors, trying to get them to stop selling their own home-grown “Who Dat” tees. Seems a bit heavy-handed, particularly in view of the hard times folks in N’awlins have suffered in recent years. (That’s what Senator David Vitter thought, at least. He fired off a letter to the NFL advising that he is printing up, for sale, a bunch of tee shirts emblazoned with the message “WHO DAT say we can’t print Who Dat!” His message to the NFL: “Please either drop your present ridiculous position [asserting control of “Who Dat”] or sue me.”)

“Ridiculous” seems about right to describe the NFL’s practice of going after local business owners for something like this. That’s especially so when any rational person would understand that this is one of those situations where you're better off cultivating support for one of your more hard-luck franchises, even if it costs you a few bucks here or there.  

But for our purposes here at CommLawBlog.com, it helps us make our point: if the NFL is willing to swim against the tide of goodwill that’s flowed into New Orleans since Hurricane Katrina, you should figure that the NFL will be perfectly happy to go after you for misuse of “Super Bowl” – darn, we messed up again – “Super Bowl ®”. Who dat ® say you haven’t been warned?

"Super Bowl ®" - Emphasis on the "®"

Our annual cautionary reminder about trademark protection

Hmmmm. Rumour has it that there’s some kind of important football game coming up in a week or so, down in Miami (the anglicized spelling is another nod to the fact that I don’t consider this “real football”). 

That means it’s time for the obligatory reminder that the term “Super Bowl ®” has been registered as a trademark by the NFL, so using the term without the NFL’s permission . . . yadda, yadda, yadda, serious financial penalties for infringement.

There’s a term for this type of recurring annual story in the journalism world: “evergreen”.   Rather than waste your time and ours, we’ll simply link to the story we posted on this issue last yearJust substitute “Colts” and “Saints” for “Steelers” and “Cardinals”. The legal principles remain exactly the same.

We should also point out that the NFL is not the only organization which has managed to stake a claim to particular words or phrases that get considerable public attention periodically. For example, just over the horizon but closing in fast we have the “Olympics ®”, the “Oscars ®”, and the “FIFA World Cup ®” (you know, the real football). And there are lots more where these came from. Some trademark owners are more obnoxious than others about enforcing their rights in the mark against every little Tom, Dick or Harry – the NFL’s hard-nosed efforts along those lines are quasi-legendary. Still, the fact is that, by jumping through the trademark registration hoops, these folks have obtained the right to control the use of their marks to a significant degree. They have also obtained the right to sue anyone who infringes on their marks. You should contact us if you have any questions as to whether a term by which you might ordinarily refer to a major event – sporting or otherwise – is a registered trademark subject to these limitations.

The preceding has been brought to you as a public service by CommLawBlog ®.