Seattle Trademark Lawyer

No need to call it the “Big Game.”

If you’re having people over to watch the Super Bowl, feel free to say you’re having a Super Bowl party.

There’s much in the news about NFL’s heavy-handed trademark enforcement. They’re bullies. But pressuring people to make up silly code names for the Super Bowl to avoid using its trademark has no basis in the law, at least not in the Ninth Circuit.

Others may differ (not counting the NFL, who I’m sure will differ). But in the Ninth Circuit, as long as you don’t imply some sort of sponsorship or connection with the trademark owner, you can use a trademark without the owner’s permission in order to refer to the trademark owner. It’s a form of a fair use known as “nominative” fair use. In my opinion, that applies to the Super Bowl trademark.

The Ninth Circuit described the elements of the nominative fair use test as follows:

“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 user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.”

Here, there’s no non-awkward way to refer to the Super Bowl without saying “Super Bowl.” (I don’t count “Big Game” as being non-awkward.) Therefore, speakers can have at it, as long as they don’t use logos or other trappings that would make someone think your Super Bowl party is actually sponsored by the NFL. (Now that would be a party!)

This is just like Terri Welles truthfully describing herself a former Playboy Playmate of the Year without Playboy’s permission. When Playboy sued, the Ninth Circuit said she had every right to use those trademarks because:

“[T]here is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the ‘nude model selected by Mr. Hefner’s magazine as its number-one prototypical woman of the year 1981’ would be impractical as well as ineffectual in identifying Terri Welles to the public.”

As far as I’m concerned, the same is true for “Big Game.”

Just say Super Bowl. No one will be confused.

P.S. Samsung had great fun with the NFL’s overbearing trademark enforcement during last year’s Super Bowl. It was the best commercial shown because it showed how comically absurd the NFL’s enforcement practices really are.