The Super Bowl: Nominative Fair Use and Famous Trademarks

As the holidays arrive, Americans settle in for Turkey, gift-giving, and a lot of football watching.  This cultural phenomenon begins with NFL games on Thanksgiving, rolls right into college football conference championships, the college football bowl season,  and NFL playoffs.  The coup de grace, coming this year on February 1, 2015, in Glendale, Arizona, is of course, the Super Bowl-though it is never referred to in any advertising material as the “Super Bowl” unless the advertising is officially licensed by the NFL.  Why is that?  The answer requires us to understand a bit about the trademark law concept of “fair use”-a frequently misunderstood concept by clients and trademark lawyers alike.

The purpose of a trademark is to identify the source of a product or service.  Trademark infringement occurs when a party other than the trademark owner uses a source identifying mark-be it a product name, slogan, logo, or otherwise-that creates a likelihood of confusion in the marketplace.  There are many occasions, however, when the use of a trademark by someone other than the trademark owner does not create confusion in the marketplace.  For example, a restaurant review may use the restaurant’s trademark to identify the object of the review without fear of being liable for trademark infringement.  This concept is known in the trade as “nominative fair use.”

This issue comes up frequently in our practice, as advertisers or ad agency clients attempt to determine what they can or can’t say about the products or services or others in their own advertising.  For example, can charity raising money to support its cause advertise that it has “Red Sox” tickets available for purchase at a fundraiser?  Can a merchant who sells “acme” brand widgets in its store advertise the presence of  “acme” brand products-even if it does not own the “acme” trademark?  Can a pizza shop invite patrons to take advantage of its “two-for-one Super Bowl Sunday special.”

The following are the elements of nominative fair use:

• The use must correctly refer to trademark owner or the goods or services identified by the trademark;
• The use must not suggest that the trademark owner endorses the product or services of person using the trademark;
• There should be no simpler way to refer to the trademark owner or the product being identified; and
• The person using the mark must use only as much of the mark as is necessary to identify the product or service of the trademark owner.

Applying these standards to the scenarios described above, it would seem that all three would qualify.  So why, then, do car dealers, electronics stores, and, yes, pizza parlors, invariably use some thinly veiled euphemism-like “the Big Game”- to identify the Super Bowl?

The answer has less to do with the application of the nominative fair use standard-which would almost certainly permit the use of the Super Bowl trademark-and more to do with a practical weighing of risks and benefits.  The National Football League is famously aggressive about enforcing its trademark rights-even in situations where it does not have a very strong case based on the law.  In a battle of attrition between the NFL and our pizza shop owner, it is not hard to imagine which party has the resources to see it through.   As a result, most responsible businesses would prefer to err on the side of avoiding the ire of the NFL-allowing for a large margin for safety.  Accordingly, the Super Bowl season will likely continue to feature not-so-mysterious references to “the Big Game.”