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Around this time every year there are lots of ads talking about 'The Big Game' or the 'Suberb'-something. Essentially whatever it takes to say their thing is for the Super Bowl, without actually using the word.

I've heard that this is because the NFL will sue you for doing this, but I don't understand why that would be the case. Also, I'm not sure what the legal basis would be for that kind of suit, given the event is a very major public event.

My question is two-fold:

  1. Does the NFL sue entities for using the term 'Super Bowl' when advertising?
  2. What is the legal basis for this when it's such a public event?
RonJohn
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Pyrotechnical
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1 Answers1

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There is a general belief that a term being trademarked means that it's illegal to use the term without permission from the trademark holder, but that is false. It is illegal only if it is done in a manner that suggests endorsement by the trademark holder. For instance, selling a football as a "Super Bowl football" would be trademark infringement, as it implies NFL involvement in the production of the football. Simply talking about the Super Bowl, such as saying "Our construction company built the stadium the Super Bowl is being played in" is not trademark infringement. Simply using a trademarked term to discuss the thing it refers to, without implying endorsement, is known as "nominative use".

However, even if one would be on solid legal footings and could win a lawsuit on the basis of nominative use, one might avoid using a trademark to avoid the hassle of being sued.

Acccumulation
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    I'm unclear on the term 'nominative use'. There's a gambling website where I live that keeps running radio ads trying to get consumers to place bets on the 'the big game'. Is it considered suggesting endorsement if they were to say, place bets on the Superbowl? – Pyrotechnical Jan 28 '20 at 23:03
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    @Pyrotechnical Another concern is always "Can I pay my lawyers as much as the NFL can pay theirs?" and the closely related "How much more will I make if I say 'super bowl' in an ad vs use a phrase that everyone knows means 'super bowl'"? If the value in the latter is smaller than the risks implied by the former, game theory says avoid conflict. This answer already mentions this in the final sentence. – Bryan Krause Jan 28 '20 at 23:30
  • @BryanKrause I'd like to avoid going down the route of who can afford more lawyers. I'm just trying to understand the legal basis and terms for this. – Pyrotechnical Jan 28 '20 at 23:33
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    @Pyrotechnical That's fine, but when you start to try to explain "why does person X do this thing?" it's pretty rare that a legal basis is sufficient explanation for the behavior. – Bryan Krause Jan 28 '20 at 23:34
  • @BryanKrause Although I stated 'why' in the title of the question, that was more of a catchy title. The questions I asked were focused just on the legal basis which the NFL could sue someone. Phillip's answer suggests the basis is due to an existing trademark that the NFL has and enforces; Accumulation's answer suggests that it's only illegal if the use is done in a manner that suggests enforcement by the trademark holder. I'm asking for clarification on where the threshold is for suggesting endorsement. – Pyrotechnical Jan 28 '20 at 23:39
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    @Pyrotechnical perhaps Stack Exchange's own trademark guidance might help: "So if you were making a product, and you used a in your product (or in its advertising) in such a way that would mislead someone into thinking that your product was owned by, operated by, endorsed by, or in any way part of , you would be violating the trademark and this would not be legal." – Andrew T. Jan 29 '20 at 04:10
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    @Pyrotechnical this is similar to LEGO® Answers Stack Exchange was requested to change its site name by The LEGO Group – Andrew T. Jan 29 '20 at 04:35
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    @BryanKrause Great point about why it's simply not worth it for most advertisers to even attempt to use the term. On the other side of things, the NFL has a huge interest in protecting their trademark as aggressively as possible, because there is lots of money to be made in licensing the term to anyone who will pay. The NFL might well lose a trademark lawsuit, but since they have a massive interest in their trademark and any "infringer" would have very little at stake, it's unlikely to ever get to that point. – Nuclear Hoagie Jan 29 '20 at 14:21
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    Perhaps worth adding that the more people exercise caution against uses that might give even the slightest hint of an endorsement, the more it becomes an established norm that whenever you hear somebody refer to the trademark freely by name it must mean they have secured an agreement with the trademark holder, thus increasing the validity of a potential claim of implied endorsement. – Will Jan 29 '20 at 14:35
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    @Pyrotechnical Does the ad highly imply that it's talking about the Superbowl, or is there a chance that they could run the same ad next time there's "a big game" coming up? – JMac Jan 29 '20 at 14:53
  • I am not a lawyer, but while "Our construction company built the stadium the Super Bowl is being played in" would be fine in a factual report or article, it might not be in an ad. It's why we see Daniel Craig in adverts clearly riffing off the "James Bond" theme without actually mentioning the name. – DJClayworth Jan 29 '20 at 15:30
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    Does this mean I cannot publicly say "I am going to Walmart's"? I am asking because here in France the problem would rather be unfair advertisement than trademark infringement (this is the reason why, on public TV, all logos are blurred - so that some do not get unfair visibility vs others. This is really for bureaucratic reasons are they are usually recognizable. They also flip the picture so that the logo is now "unreadable") – WoJ Jan 30 '20 at 09:04
  • @WoJ, if you are, in fact, going to Walmart then 99.9% of the time there is no conceivable issue with saying so. However, if you say so in the middle of some blockbuster TV show in a context where people may infer that Walmart paid you to mention it, you might have an issue. – Will Jan 30 '20 at 11:19
  • @Will: an issue with what? With Walmart? (I do not think so as they payed me) With the show? (I can understand if they are not allowed to advertise like in France, or that they would like to get a part of what I was payed) – WoJ Jan 30 '20 at 11:31
  • @WoJ if Walmart did pay you then no problem either! The issue is where you give a false impression that you and the trademark holder are in business together if you aren't. – Will Jan 30 '20 at 11:43
  • @Will: so I still do not understand. If I say "I went to Walmart's" -- who in practice could react? Walmart would not, whether I was payed or not - because I do not speak for them but about them (in a neutral way). The TV show as far as I understand for the US would not care either as there is no regulation against advertising, right? (this is as I mentioned fundamentally different in France). The spectators? (why would they?) – WoJ Jan 30 '20 at 12:40
  • @WoJ on a large public platform there's no such thing as a neutral mention. You are raising the profile of a trademark, and depending on the context and your own public standing this may be a positive or a negative thing for that trademark. The possibility of a positive effects is what motivates real endorsement contracts, but in any case it can be damaging to a company if people believe an endorsement contract is in place when there is none. – Will Jan 30 '20 at 12:52
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    Wouldn't Anti-SLAPP laws prevent lawsuits like this from starting? – Giacomo Alzetta Jan 30 '20 at 14:54
  • If someone were to say in public something to the effect of "You should favor my products or services because Wal-Mart chooses to stock them.", then Wal-Mart might have a basis to object, even though there would be no objection if one said in a quarterly report "Business is up since Wal-Mart signed on as a customer". – supercat Jan 30 '20 at 15:37
  • @GiacomoAlzetta this is about potentially valid, though subjective and even tenuous, applications of trademark law. That might be an attractive arena for a SLAPP suit but that doesn't mean good-faith actions aren't also conceivable. – Will Jan 30 '20 at 18:14
  • While what you say is true, you neglect to include how the difference between nominative use and trademark infringement is subjective and up to the opinions of judges. That is why most don't want to bother--not fear of a bad faith lawsuit, but fear that there is a way that what they say could be interpreted as trademark infringement even though they think it is nominative use. – trlkly Jan 31 '20 at 17:03
  • @GiacomoAlzetta My comment above is why Anti-SLAPP laws aren't useful. The area is so murky that it's very difficult to prove that the trademark owner is acting in bad faith. Throw in the duty to challenge every possible trademark violation lest you lose your trademark, and it's nearly impossible. – trlkly Jan 31 '20 at 17:05