No doubt we are all looking forward to watching the face-off between the New England Patriots and the Philadelphia Eagles for Super Bowl LII this weekend. If you’re in advertising, you favor the commercials. If you’re in music/entertainment, you’re ready for Justin Timberlake’s performance for the halftime show. If you’re from Boston, well, I know where your allegiances lie. If you’re a trademark attorney, you favor the enforcement and counterfeiting issues related to all-things-NFL. To that end, we have pulled together our top three recent trademark/branding NFL plays. We hope you enjoy our “highlight reel,” and although it pains me to say it (being a Cowboys fan myself), best of luck to the Patriots and Eagles in …well…the….Big Game.
The Washington Redskins Goal and Inches
In Pro-Football Inc. v. Amanda Blackhorse et al., No. 15-1874, the U.S. Court of Appeals for the Fourth Circuit remanded the decision below canceling the Washington Redskins’ trademarks. These trademarks were initially canceled by the Trademark Trial and Appeal Board (TTAB) because they were disparaging to Native Americans under Section 2(d) of the Lanham Act. The Washington Redskins disagreed, appealing the TTAB’s decision all the way up to the Fourth Circuit. During the pendency of the appeal, the U.S. Supreme Court’s decision in Matal v. Tam held that the disparagement provision was an unconstitutional violation of the Free Speech clause of the First Amendment. (Check out my previous post here for more on the impact of Matal v. Tam for scandalous marks.)
In light of the Supreme Court’s decision, the Fourth Circuit vacated the district court’s decision upholding the cancellation, and sent the case back to the district court “for further proceedings consistent with Tam.” In other words, the cancellation cannot be based on disparagement. The Washington Redskins are now inches away from reversing the cancellation of their trademarks, and it’s likely that this will happen this year.
Former Super Bowl Champion Darren Woodson’s Startup Makes a $1 Million First Down
Three-time Super Bowl champion Darren Woodson has made a “first down” by recently closing a $1 million seed round for his anti-counterfeiting startup CounterFind. According to its website, the startup has developed software that plugs directly into Facebook and Amazon’s API and uses image recognition to “recognize, report, and remove all ads marketing counterfeit merchandise on Facebook and all counterfeit listings on Amazon.” Its aim is to streamline the process of removing counterfeit ads and goods. In effect, and to the chagrin of some trademark attorneys, it seems to be positioning itself as an alternate legal services provider, offering another option to clients in addition to the traditional model of hiring an attorney and sending a cease and desist letter.
As a futurist myself, I believe that this technology can improve efficiency for brand owners to monitor and remove counterfeit ads and goods from digital platforms faster than a human. However, it is unclear, at least at this early stage in the company, how effectively the software can address more complicated issues of ownership claims, prevention of sellers popping up under different aliases (the whac-a-mole situation), or enforcement against foreign parties. It further appears that the software cannot come near to assisting trademark owners’ ability to seek redress against counterfeiters by way of damages or injunctive relief. So, fear not trademark attorneys, you can keep your day job. What is more apparent is that CounterFind has an opportunity in the marketplace to position itself as a complementary tool to traditional legal services, helping brand owners to monitor their trademarks.
Fear of Getting Sacked from Using the “SUPER BOWL”?
It’s no secret that the NFL is notorious for enforcing its trademark rights in its SUPER BOWL trademarks. If the NFL believes you are using the mark or confusingly similar marks in a commercial capacity, you should expect to get hit with a cease and desist, and hit hard. For example, back in 2007 the NFL famously sent a cease and desist letter to the Fall Creek Baptist Church for the church’s promotion of a Super Bowl viewing party without the NFL’s permission. Although the NFL now has taken a more lenient position towards church viewing parties, it continues to proactively enforce its trademarks for this main event.
The NFL’s enforcement does not stop at cease and desist letters. The NFL firmly opposes any trademark application for what it believes are confusingly similar marks. In the past year alone, the NFL has opposed the registration of six trademarks: BUC BOWL for organizing community and cultural events, SUPER BOWL for frozen bread, BO’S BOWL GAME PACKAGE for tailgating foods, SUPERBOWLING SPECTACULAR for charitable bowling events, and SUPER BIG BOWL and BIG JOE SUPER BIG BOWL for furniture. Unsurprisingly, all of these marks (except for BUC BOWL, which is still pending) were abandoned.
Want to try a better tactic? Refer to it as “The Big Game” when referring to the game in connection with your goods or services. And if you’re looking to register a BOWL-related mark for anything arguably related with football, the NFL or its teams, perhaps think twice and save your filing fees.
If you’d like to discuss issues of trademarks or brand enforcement, or want to hear my predictions for Super Bowl LII, please contact me at firstname.lastname@example.org.