On Sunday, February 7, 2016, the Carolina Panthers® and Denver Broncos® will take the field for the kickoff of Super Bowl® 50. This is the annual showcase game for the National Football League®. In the interim time, the NFL® has assembled an army of lawyers that are ready, willing and able to send a bevy of cease-and-desist letters to any individual or entity that has the audacity to use certain terms or phrases that the league perceives might dilute or infringe famous trademarks that belong to the NFL.
The Super Bowl is practically an American institution, now in its fiftieth year. Many groups contend that the Monday after the Super Bowl should be a national holiday. In fact, a formal petition was once initiated for that very purpose. As a result, you will see and hear numerous advertisements leading up to the Super Bowl promoting numerous goods and services. It is kind of a big deal. What you are unlikely to hear in these advertisements, however, is quite noteworthy. You will rarely hear any advertisement use the term SUPER BOWL.
Why are we reduced to using nebulous terms like “The Big Game” or “The Pro Football Championship” to identify and describe a game? Why is the NFL so trigger-happy in seeking to stop all uses of “Super Bowl” that are not made by direct sponsors of the league or the television broadcast? What is the legal basis for the NFL’s position on this matter? Is it possible that the NFL is wrong? (Spoiler alert: YES!)
Trademark Rights (In General)
Trademark is defined as “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.” Trademark rights exist essentially to assist the consuming public in identifying where a particular good or service originates and to protect the trademark owner from competitors who might unlawfully divert customers through confusing uses of a mark. While the owner of a trademark can claim the mark as a property right, the rights only exist so long as the mark is continually in “use” in commerce and the mark operates as a true source-identifier of those particular goods or services.
As the owner of a trademark, there is a legal duty to police the mark against potential infringement though unauthorized uses. This includes any unlawful uses that might confuse the public into believing that a third-party is sponsored by or approved by the trademark owner. As the USPTO has stated, if the trademark owner does not actively police the market to enforce trademark rights, the owner’s ability to exclude is reduced and the value of the mark may be diminished. Likewise, if unauthorized uses of the mark in commerce are unchecked, the trademark could lose significance among the relevant consumers and the mark could become “generic” and therefore no longer be a trademark.
Accordingly, based on traditional legal principles, the law not only encourages but practically demands that a trademark owner vigorously police the marketplace for any and all unauthorized uses. This includes unauthorized “sponsorship” or indications of approval through use of a trademark by others. In a nutshell, this is the philosophy adopted by the NFL when it comes to protecting not only its trademarks but all of its intellectual property rights. Specifically, from the NFL’s perspective, this applies to all potential uses of its “Super Bowl” trademark and all the goods and services affiliated with that term.
Origin of SUPER BOWL as a Trademark
The first Super Bowl ever played was not actually called the “Super Bowl” at the time. In 1967, the first game now known as the Super Bowl was originally coined “The NFL-AFL World Championship Game.” Prior to 1967, the NFL and AFL (American Football League) were separate football leagues and organizations. This championship game was the culmination of merger talks between the two competing leagues. The actual origin of the “Super Bowl” name itself was more of a happy accident. In 1966, Lamar Hunt, the owner of the AFL’s Kansas City Chiefs, jokingly referred to a championship game as the “Super Bowl” in a letter to the NFL’s Pete Rozelle. Hunt based the name on the “popular rubber children’s toy” called the Super Ball. Nevertheless, this playful name was not recognized by the NFL as the true name at first.
While fans and the media colloquially referred to it as the Super Bowl, the true “Super Bowl” moniker did not become officially recognized by the NFL until the 1969 edition of the game. Moreover, the NFL did not even seek to federally register the SUPER BOWL trademark until March 7, 1969 (with a registration date of December 9, 1969). This application claimed first use in commerce as January 15, 1967 – dating back to the original game. Nevertheless, the NFL quickly realized the commercial value of this trademark.
The 1969 edition of the Super Bowl featured the favored Baltimore Colts (representing the NFL) against the upstart New York Jets (representing the AFL). Joe Namath of the Jets guaranteed a victory three days before the game, which generated a lot of attention for the game. In the first great upset of the modern NFL, Namath’s guarantee proved to be true, and the spectacle of the Super Bowl® has only grown in stature ever since. Ratings for Super Bowl XLIX made it the most watched program in American television history, reaching as many as 120.8 million viewers by the end of the game.
The NFL’s Cease-and-Desist Campaign
In consideration that the SUPER BOWL trademark may be one of the NFL’s most valuable assets, it cannot be surprising to know that the NFL vigorously protects this mark from all unauthorized uses. The NFL has made billions of dollars from the licensing and sponsorship of the Super Bowl. Every year, there are reports of the NFL sending cease-and-desist letters to bars and restaurants for what it deems to be unlawful uses of the trademark. The NFL once even sent a cease-and-desist letter to a church for alleged infringement of its copyrights (public performance of the game broadcast) and trademarks (use of “Super Bowl” to promote party).
The average NFL team is worth approximately $2 billion. During the 2014 season, estimates are that the NFL took in an estimated $12 billion in revenue. The combined value of all the teams and the league may exceed $45 billion. The recent movie Concussion made a joke about the NFL “owning” a day of the week (Sunday). The joke is funny because there is more than a little bit of truth to that sentiment. The NFL is a monstrous corporate entity. It has the reach and resources that individuals and small businesses simply cannot fathom. Nor can a single bar or restaurant try to compete with the NFL on a dollar-for-dollar basis. Thus, when the NFL and its lawyers say “cease-and-desist from using the federally registered trademark SUPER BOWL®!” it is expected that no one will put up a fight. This leads to ham-fisted attempts to avoid the wrath of the NFL’s outside counsel when promoting events tied to the broadcast of the Super Bowl and related games. The threat of the NFL is real.
Instead of fighting the NFL in court, most businesses casually refer to the event in promotional advertising as “The Big Game.” This term is theoretically generic and specious enough to avoid the inevitable cease-and-desist letter. Not that it stopped the NFL from trying to also register “The Big Game” as yet another trademark in its portfolio. The NFL eventually abandoned the application for THE BIG GAME for “entertainment services in the nature of football exhibitions” in May 2007. If the NFL also obtained that trademark, however, what could be used to merely describe a particular football game of importance without running afoul of the NFL’s version of trademark law?
This is precisely where the NFL may be overstating its legal rights.
Nominative and Descriptive Fair Use of Trademarks
A trademark owner’s rights are not absolute. Much like in copyright law, trademark law has its own version of “fair use” that allows a third-party the legal right to use a trademark without authorization or permission from the trademark owner. Of particular relevance are two types of trademark fair use: nominative fair use and descriptive fair use.
Nominative Fair Use of Trademarks
“Nominative” fair use means:
… the use of another’s trademark to refer to the genuine goods or services associated with the mark. The term “nominative” reflects that the mark generally is the most informative name for the specific goods or services intended to be referenced.
Nominative fair use is an affirmative and complete defense to allegations of trademark infringement. This defense was set forth in detail by the Ninth Circuit in the New Kids on the Block v. News America Publishing, Inc. case from 1992. The Ninth Circuit’s example of nominative fair use was a hypothetical reference to “the [six]-time world champion … professional basketball team from Chicago” as compared to simply identifying the team as the “Chicago Bulls.” This type of use does not imply sponsorship or endorsement. The use is made to merely describe the thing in question. In essence, nominative fair use holds that the only practical way to refer to something is to refer to the trademark.
The legal test for nominative fair use is that it is permissible as long as the following factors are met: (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark is used as is reasonably necessary to identify the product or service, and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. The purpose of this test is to determine whether this nominative use will “inspire a mistaken belief on the part of the consumers that the speaker is sponsored or endorsed by the trademark holder.” Sponsorship may be implied if the speaker uses an unnecessary trademark or “more” of the trademark than is necessary.
The biggest hurdle for nominative fair use is whether the use is made for commercial purposes. But even a commercial user is entitled to the nominative fair use defense where the defendant (the commercial user) is using a trademark to describe the plaintiff’s product, rather than its own. This is the situation when a third party refers to the “Super Bowl” to identify the NFL’s product but for the third party’s own commercial benefit, such as to sponsor or promote a game-watching party at a sports bar or restaurant.
Descriptive Fair Use of Trademarks
Descriptive fair use is slightly less specific than the “nominative” defense. Under 15 U.S.C. § 1115(b)(4), a defendant in a trademark infringement matter may invoke the descriptive fair use defense by demonstrating that the alleged use is as follows:
“is a use, otherwise than as a mark … which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.”  This particular fair use defense arises “based on the principle that no one should be able to appropriate descriptive language through trademark registration.”
In short, the doctrine state that you cannot register a particular word as a trademark and then seek to exclude all uses of anyone using that particular word in all descriptive contexts through your registration. To prevail on such a fair use defense, the accused must demonstrate that: (1) it did not use the mark as a trademark; (2) the use is descriptive of its goods or services; and (3) it used the mark fairly and in good faith. The fair use defense is available even against federally registered trademarks that are incontestable. In this context, it is almost the inverse of the nominative use. Descriptive fair use is where the user of the mark uses it descriptively to identify the user’s own goods or services, not the trademark owner’s.
Meanwhile, to the extent a trademark owner claims that alleged descriptive “fair” uses remain likely to confuse consumers, the U.S. Supreme Court has held that the party claiming fair use does not need to negate a full likelihood of confusion analysis. Instead the phrase “used fairly” within the statute only requires that the use describe the goods or services accurately.
Given the above defenses, it is likely that the nominative fair use defense will more readily apply to the “Super Bowl” trademark uses than a descriptive fair use defense normally would. Now that we have a handle on potential “fair uses” of trademarks, how does the test apply to uses of SUPER BOWL when advertising or promoting a party or event to watch the game?
Applications of Fair Use, the NFL, and SUPER BOWL®
The classic example of a use of SUPER BOWL that draws a cease-and-desist letter is when a bar or restaurant advertises something to the extent of “Super Bowl party at ___” and proceeds to collect a cover charge at the door for all attendees. Retail stores may also commonly promote a “Super Bowl discount” as an enticement to customers to shop there. These entities are directly or indirectly using the NFL’s trademark in advertisements or slogans to attract customers. These are commercial uses. That said, in general, the NFL objects to any form of advertising that directly refers to the Super Bowl. But is the NFL correct in seeking to exclude these uses?
The best hypothetical example for illustrative purposes may be a sports bar that wants to host a Super Bowl-themed event and attract as many beer-drinking and wing-eating customers as possible. The bar begins advertising in January for a “Super Bowl Bash!” and prints and distributes flyers including promotional material to inform potential attendees of the details – which may include prizes, contests, and even a Super Bowl Squares game (which is – *gasp* – a form of gambling!). Now, if the sports bar uses the NFL logo or any other graphical design marks that belong to the NFL, it is likely infringing the NFL’s trademarks because there is no need to use such logos to inform or describe the nature of the bar’s event. What if the sports bar merely advertises “Super Bowl Bash!” with no other uses of the league’s trademarks (i.e., no logos)?
If the NFL finds out about this Bash, a cease-and-desist letter is likely on its way. Once received, what if the sports bar decides to challenge the NFL and claim “nominative fair use” of the NFL’s trademark? Assuming the sports bar has the resources and the conviction to fight the allegations all the way through a trial and appeal, the following is what the legal analysis might look like.
The trial court would acknowledge that the defense of nominative fair use is an affirmative defense to trademark infringement, even though it is not a statutory defense. This defense would focus on the ability to describe another’s product without being forced to resort to “absurd turns of phrase to avoid using the mark.” As the Ninth Circuit has expressed, this defense exists and is satisfied upon a factual demonstration of the following:
[W]here the defendant uses a trademark to describe the plaintiff’s product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
First, the NFL will contend that “The Big Game” or some other vague term of art will sufficiently operate to identify the Super Bowl without having to resort to actually using the SUPER BOWL® trademark. To appropriate the Ninth Circuit’s own word – this is absurd. A substantial composite of the American viewing public knows exactly what the Super Bowl is and who owns the name and also who is in charge of the game. That same group of people is unlikely to know what “The Big Game” is without additional context, thus making these alternative terms not readily identifiable of the product or service at issue. That the NFL itself has tried to acquire a trademark interest in THE BIG GAME only underscores the fact that there are limited ways to reasonably identify the “Super Bowl.” If “The Big Game” was not inherently generic, there would be value in the name. Therefore, forcing a sports bar to coin a new term that somehow identifies the Super Bowl but simultaneously does not run afoul of the NFL’s myriad existing trademarks demonstrates the absurdity of such a pointless task.
Second, if we assume this hypothetical sports bar does not use the NFL’s “shield” logo or any of the other graphical marks owned by the NFL, is the use of the term “Super Bowl” reasonably necessary to identify the product or service? The NFL will contend that there are many ways to describe an important football game, but how is that substantially different from the prior example of “the [six]-time world champion … professional basketball team from Chicago” as compared to the more elegant “Chicago Bulls”? There is a reason the Super Bowl is no longer called the NFL-AFL World Championship Game, as that is a lot of words to describe something that can readily be resolved just by saying “Super Bowl.”
Lastly, even if we recognize that the NFL derives a lot of its revenue from sponsorship and licensing rights, it is equally unlikely that the average bar patron is going to believe that a random sports bar is either sponsored by or endorsed by the National Football League. The possibility of “confusion” in the trademark sense of the word is therefore minimal. Nor is there a lost opportunity for sponsorship or endorsement by the NFL. It is unlikely that the average sports bar would pay a licensing fee to the NFL just to be able to display NFL logos or use the words “Super Bowl” in its advertising to a limited local market. This would be of trivial value to a bar, as the average American is well aware of the existence of the Super Bowl and also the fact that it is owned by the NFL. There is a reason it is a famous trademark. The mere use of the words “Super Bowl” will not trigger an association of sponsorship between the NFL and any establishment that hosts a party for game-watching.
The NFL may rightly own the trademark for SUPER BOWL, but that trademark does not give the NFL the unfettered right to exclude all potential uses of the term, especially nominal or descriptive uses that do not threaten the ability of the mark to operate as a source-identifier of the NFL’s goods and services. I can only hope one day that this hypothetical sports bar becomes a reality and the NFL is subsequently taken to task for its bullying ways.
In the interim, I will continue to watch and discuss the Super Bowl with the comfort of knowing that my use of certain terms is safely protected by doctrines of fair use.
 CAROLINA PANTHERS, DENVER BRONCOS, SUPER BOWL, NATIONAL FOOTBALL LEAGUE, and NFL are all federally registered trademarks. See U.S. Trademark Reg. Nos. 21/20,117; 09/21,748; 08/82,283; 10/76,139; and 29/41,347, respectively.
 http://www.uspto.gov/ip/TMLitigationReport_final_2011April27.pdf (citing 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:91 (4th ed. 2010); see also 1 McCarthy § 2:15 (“A trademark is a kind of property, but a very delicate property right it is. Great care must be taken in the nature of its use, and in the manner in which it is assigned or licensed, lest the significance of the mark be lost.”))
 See 15 U.S.C. § 1125(a) (also known as Lanham Act § 43(a)).
 Interestingly, the NFL did not try to register a trademark for “NFL-AFL World Championship Game.”
 See U.S. Trademark Reg. No. 08/82,283 (1969). http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:311iku.3.14
 An enterprising reader of this may wonder if an aggrieved party can move to cancel the NFL’s trademark registration for “fraud” on the USPTO, since the NFL claims first use dating back to a time when the NFL itself knowingly did not use the term “Super Bowl” to describe its championship game held in 1967.
 U.S. Trademark App. Serial No. 78/803,677 (filed January 31, 2006; abandoned May 18, 2007).
 New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992).
 Id. at 306.
 Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175-76 (9th Cir. 2010) (citing New Kids).
 Id. at 1176.
 Brother Records, Inc. v. Jardine, 318 F.3d 900, 904 (9th Cir. 2003).
 Sorensen v. WD-40 Co., 792 F.3d 712, 722 (7th Cir. 2015).
 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 123 (2004).
 The “nominative fair use” defense first being coined and recognized by the Ninth Circuit in 1992 in the aforementioned New Kids on the Block case, 971 F.2d 302 (9th Cir. 1992).
 New Kids, 971 F.2d at 306-07.
 Id. at 308.
 Not that I would put it past the NFL to conjure up a survey that claims to support a conclusion indicating “confusion” of sponsorship by customers. This is the same league where a team with a racist nickname claimed that survey evidence showed that the term “Redskin” is not a slur but is instead a term of respect to “9 out of 10 Native Americans.” This survey has been repeatedly mocked and there has been no evidence to support any claims that it was scientifically valid. Beware the NFL’s public relations machine.