Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.
February 2009 Issue
Unregistrable
SUPER ®
Before the thrilling image of Santonio Holmes’s shoe-tips brushing the extremities of the end zone fades into legend, let’s focus on the perennial winner at each year’s preeminent national civic celebration. If you guessed trademarks, you guessed right. Notice I haven’t yet referred to “The Big Game” by its most widely used and universally beloved super title. Nor did thousands upon thousands of advertisers hawking every thing from mega-sized plasma TVs to super-sized chicken wings. Why has the euphemism “The Big Game” replaced the “Super Bowl®” in so much of the commercial vernacular? The answer, as another S. Holmes would have put it, is “elementary,” with the key element being ®. The National Football League not only has locked up federal registrations covering the vast retail and broadcast playing field, the NFL also has hewed to the time-honored locker room cliché, “the best defense is a good offense.” Implementing an aggressive playbook that might make even the stone-faced Tom Landry blush, the NFL launches cease-and-desist letters and enforcement actions like tight spiral passes against any advertiser who has the temerity to advertise a “Super Bowl” special or that uses the “Super Bowl” mark without first securing a license from the League and becoming an official sponsor. Against the juggernaut of the NFL, anyone who sells unauthorized “Super Bowl” merchandise stands about as much chance as Kurt Warner facing a Steelers’ safety blitz. The NFL has gone so far as to block even humble churchgoers from calling their annual Big-Game watching event a “Super Bowl Party.” That’s why most businesses that cannot afford to “pay-for-play” have opted for the end-around of calling the event “The Big Game.” Of course, everyone who sees or hears one of these ads knows that “The Big Game” is actually synonymous with the “Super Bowl.” But just as the fourth quarter of an NFL preseason game long after the stars have hit the showers hardly matches the thrill and spectacle of a come-from-behind, last-second championship win, an advertisement that generically touts “The Big Game” lacks the allure, cachet, spectacle, and tradition embodied in the “Super Bowl” trademark. And the NFL’s winning game plan of aggressive enforcement ensures that the prestige and goodwill embodied by that mark continues to shine like the gleaming Lombardi trophy that Ben Roethlisberger and the Steelers hoisted on that balmy evening in Tampa. Of course, in trademarks, as in football, a win-thirsty warrior can go too far. Back in 2006, the NFL tried to tackle advertisers and merchants into further submission by applying to register “The Big Game” as its trademark too. But faced with widespread outcry from global retailers and several universities with their own “big games” against longtime rivals, and with a trademark opposition looming, the NFL abandoned its application. The cagey trademark champion proved once more that it knows not only when to pounce, but when to punt.
Unregistrable
SUPER ®
Before the thrilling image of Santonio Holmes’s shoe-tips brushing the extremities of the end zone fades into legend, let’s focus on the perennial winner at each year’s preeminent national civic celebration. If you guessed trademarks, you guessed right. Notice I haven’t yet referred to “The Big Game” by its most widely used and universally beloved super title. Nor did thousands upon thousands of advertisers hawking every thing from mega-sized plasma TVs to super-sized chicken wings. Why has the euphemism “The Big Game” replaced the “Super Bowl®” in so much of the commercial vernacular? The answer, as another S. Holmes would have put it, is “elementary,” with the key element being ®. The National Football League not only has locked up federal registrations covering the vast retail and broadcast playing field, the NFL also has hewed to the time-honored locker room cliché, “the best defense is a good offense.” Implementing an aggressive playbook that might make even the stone-faced Tom Landry blush, the NFL launches cease-and-desist letters and enforcement actions like tight spiral passes against any advertiser who has the temerity to advertise a “Super Bowl” special or that uses the “Super Bowl” mark without first securing a license from the League and becoming an official sponsor. Against the juggernaut of the NFL, anyone who sells unauthorized “Super Bowl” merchandise stands about as much chance as Kurt Warner facing a Steelers’ safety blitz. The NFL has gone so far as to block even humble churchgoers from calling their annual Big-Game watching event a “Super Bowl Party.” That’s why most businesses that cannot afford to “pay-for-play” have opted for the end-around of calling the event “The Big Game.” Of course, everyone who sees or hears one of these ads knows that “The Big Game” is actually synonymous with the “Super Bowl.” But just as the fourth quarter of an NFL preseason game long after the stars have hit the showers hardly matches the thrill and spectacle of a come-from-behind, last-second championship win, an advertisement that generically touts “The Big Game” lacks the allure, cachet, spectacle, and tradition embodied in the “Super Bowl” trademark. And the NFL’s winning game plan of aggressive enforcement ensures that the prestige and goodwill embodied by that mark continues to shine like the gleaming Lombardi trophy that Ben Roethlisberger and the Steelers hoisted on that balmy evening in Tampa. Of course, in trademarks, as in football, a win-thirsty warrior can go too far. Back in 2006, the NFL tried to tackle advertisers and merchants into further submission by applying to register “The Big Game” as its trademark too. But faced with widespread outcry from global retailers and several universities with their own “big games” against longtime rivals, and with a trademark opposition looming, the NFL abandoned its application. The cagey trademark champion proved once more that it knows not only when to pounce, but when to punt.
