Friday, February 1, 2008

NFL remains aggressive over SUPER BOWL while Patriots go for 19-0 THE PERFECT SEASON

Every year as the date of the Super Bowl draws near, it has become a perennial favorite topic in the trademark law arena to discuss the National Football League’s (“NFL’s”) notoriously aggressively enforcement of its SUPER BOWL trademark.

Numerous stories in the past (see, e.g., USA Today story from 2004) have reported on the Las Vegas hotels cancelling their Super Bowl parties after receiving cease-and desist letters from the NFL. Then there are the stories about the Super Bowl parties organized by churches (see yesterday’s Washington Post article) that are facing the same cease and desist threats by the NFL

The NFL’s policy is to ban any public exhibitions of its football games on large movie screens or TVs with a screen size larger than 55 inches (although sports bars are apparently exempt from the prohibition). The NFL’s rationale is understandable given that a large group of viewers watching the game outside of their home affects TV ratings, which in turns affects advertising revenue (although no one apparently has told that to the many advertisers who are still lining up to pay a record $2.7 million for a 30 second spot this year – see story here).

And then there is the use of the SUPER BOWL mark itself. Most businesses, after either receiving notice directly from the NFL or otherwise hearing stories of other businesses receiving such notices from the NFL, began referring to the Super Bowl football game event as “The Big Game.” This allowed businesses to capitalize on the event that has become a holiday of its own without coming under the wrath of the NFL for trademark infringement. In addition, use of “The Big Game” served to reinforce the NFL’s exclusive ownership of the Super Bowl name and worked to prevent false association and “genericide.” As more businesses became more aware of the NFL’s trademark rights (and its aggressiveness in enforcing such rights), more and more adopted the substitute phrase.

And that’s why the NFL looked really bad when it applied to register THE BIG GAME mark as its own trademark. It looked pretty unfair for the NFL, after aggressively forcing merchants to adopt another phrase that would not infringe its SUPER BOWL mark, to then seek to claim proprietary rights to such mark after such wide-scale adoption. The NFL ultimately (and wisely so) abandoned the application. An article today in Forbes magazine (link here) recounts the effort by one law firm to oppose the NFL’s application. And there is fellow blogger Ron Coleman who (rightly so) gives himself a pat on the back for saying the same thing (link here) months earlier – and who also deserve credit as the originator of the Super Bowl® Watch and Contest I.

But the same old Super Bowl trademark enforcement story was not the only trademark news today. There was another Super Bowl-themed trademark story this year to go along with the usual fun.

Photo by Patrick Whittemore (Boston Herald)

Now comes news (courtesy of the Boston Herald) that the Patriots are so confident in their victory on Sunday that they have already filed trademark applications to register the marks 19-0 and 19-0 THE PERFECT SEASON. Kraft Group, LLC (“Kraft”), the owner of the New England Patriots NFL franchise, filed the Section 1(b) intent-to-use applications on January 17, 2008, listing the same five classes of goods in each application, including DVDs and video games; calendars, posters, and bumper stickers; clothing; toys; and providing sports and entertainment information and online computer games.

For those who think that the Patriots don’t have a chance in getting either mark registered, there was a Section 1(b) intent-to-use application filed back in 1998 by Bill and John Harpole for THE PERFECT SEASON 19-0, which received a notice of allowance, although a statement of use was never filed and the application went abandoned. There was another Seciton 1(b) intent-to-use application for the mark 19-0 filed in 1998 (for two classes of goods), but it was abandoned for failure to respond to the USPTO's non-final action.

Much depends on how the Patriots will actually use the mark on the aforementioned goods and services. As so often happens with trademark applications seeking to register a slogan or phrase to put on various items such as clothes and video games, the USPTO may refuse registration on the grounds that the mark is merely ornamentation that consumers are likely to perceive as conveying a message rather than indicating the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981). In order to overcome such an ornamental rejection, an applicant typically must -- a) argue and submit evidence showing that the mark has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument); b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship); c) amend the application to seek registration on the Supplemental Register; or d) submit a new specimen showing non-ornamental use. In this case, Kraft may be able to argue effectively either indicator of secondary source or sponsorship (namely, the New England Patriots) or acquired distinctiveness. Otherwise, it may be left with registration on the Supplemental Register.

While some have decried Kraft’s applications as smug and snooty, Kraft representatives assert that the filing is merely defensive mechanism to prevent people from profiting from the Patriot’s historic season. And based on another application that was pending at the time of Kraft’s filing, they may have a point.

On November 8, 2007, William Harpole again filed an application to register the mark THE PERFECT SEASON 19-0 (for hats, jackets, sport shirts, sports jackets, sports shirts [sic], t-shirts in Class 25) on the Supplemental Register. Because Harpole is seeking registration on the Supplemental Register, the aforementioned ornamental rejection will not be an issue. However, Harpole has a different issue he must face – namely, registration on the Supplemental Register can only be sought when the mark is being used in commerce. If Harpole’s application was supposed to be a §1(b) application requesting registration on the Supplemental Register, the application will be rejected under §23 of the Lanham Act – a refusal that can only be satisfied by filing an acceptable allegation of use. See TMEP 815.02. However, the effective filing date of Harpole’s application will be the date on which Harpole files his allegation of use – not the filing date. Kraft’s applications, on the other hand, will have a constructive date as of the filing date of the applications. Depending on if and when Harpole was actually using the mark in commerce, this could set up an interesting priority contest between the two parties.

Assuming the Patriots win (I can’t imagine they would want to use the marks if they lose) and desire to follow through with using the mark in commerce, Kraft’s trademark applications are likely to be suspended pending the outcome of the prosecution of Harpole’s applications – at least with respect to the Class 25 goods (which Kraft could divide out should it so desire). Nonetheless, if Harpole is somehow able to get his mark registered on the Supplemental Register, it could still prevent the registration of any confusingly similar mark by Kraft (I suspect that Kraft’s 19-0 mark would be confusingly similar to Harpole’s THE PERFECT SEASON 19-0).

Of course, the New York Post (ever defensive of its hometown team, the New York Giants) responded to the news of Kraft’s trademark applications (see article here) with what has to be one of the best arch-rival responses ever – in the form of a trademark application to register the mark 18-1 (Serial No. 77385477 – not yet available on TARR). While I doubt the New York Post has any honest “intent-to-use,” it sure does make for a good laugh – and it only cost $325 ($275 if they were smart enough to use TEAS Plus).

Vegas™Esq Prediction:
Being in Vegas, it’s not about who wins or loses – it’s about who covers the spread. With the Giants getting 12 points, I think Patriots will win, but they won’t cover (although I am tempted to put a small Moneyline bet on the Giants – Super Bowl’s tend to be wacky games and you never know – the Giants may just pull it off).

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