Question of the Day - 03 February 2023

This is one of those questions we receive from time to time that we have to think about to get the gist.

It seemed to boil down to the "we." We, as in the general public, can say "Super Bowl" anytime we please.

We, as in an editorial organization, can also say, or use, or write "Super Bowl" with impunity, as we are doing right here.

But we as in commercial concerns are prohibited from saying, using, or promoting "Super Bowl" for money-making purposes. For the purposes of this QoD, we're assuming the question is about this prohibition, which there has been ongoing and serious for the past 20 years. 

If we're storming off in the wrong direction, please let us know. But for now ...

It’s fairly well-known that advertisers, from tire shops and strip clubs to casinos, aren’t allowed to use the names "Super Bowl" and "Super Sunday" in their come-ons during the lead-up to the big pro-football-championship game. The National Football League has trademarked both names (it also tried to trademark "The Big Game," but failed) and is aggressive about defending its ownership.

This has led to some interesting repercussions. The best one we know of is Stephen Colbert of the "Late Show" who, after taking the name in vain, was asked by his bosses at Viacom, scared of lawsuits, to refrain from saying it. Colbert moved one letter in Super Bowl and instituted the "Superb Owl" campaign, in which he tossed owl tidbits into his football commentary to satirize the situation.

Similarly, one year, MSNBC’s Chris Matthews of the "Hard Ball" show went to cover the Super Bowl, but was afraid to say so. Instead, he told viewers he was on his way to see "the teams" get ready for the "big game" -- a news show that was scared to identify the very news event it was covering.

Another incident that received a lot of coverage was the Indiana church group that wanted to charge admission to a "Super Bowl Party," only to receive a cease-and-desist letter from the NFL.

When the Big Game was held at MetLife Stadium in East Rutherford, New Jersey, the NFL wouldn’t allow the nearby town of Montclair to use the name. A Montclair councilman complained that the NFL "encourages us to throw, in essence, a huge Super Bowl party, then they don't allow us to use the words. We’ve had to make it essentially a 'Montclair-winter-festival-that-happens-to-coincide-with-that-big-game-whose-name-we-can't-mention’ event."

Whatever the infringement, when the NFL discovers one, it notifies the offending party. If nothing changes, a cease-and-desist letter follows. The NFL never mentions names, but it has admitted to sending "dozens of letters" prior to … that game … every year.

So what’s going on here? A few things.

First, a trademark is only as valuable as the will to enforce it. Thus, if the NFL learns about a trademark infringement and fails to act on it, it could lose the trademark altogether. By trademarking the name, the NFL has essentially forced itself to prevent infringement every time it happens; otherwise, it looks like selective enforcement, which would lead directly to "waiving" (the legal term) its right to enforce the trademark.

The term "World Series," for example, isn't trademarked. That's why we've had the World Series of Poker for more than 50 years, the World Series of Soccer (1991-1994, 2005-2007), the Little League World Series, and a few others.

Second is where the bottom line enters the picture. The NFL’s enforcement is also about protecting its sponsors. The league creates "official" beers, chips, sodas, pickup trucks, airlines, what have you. And the privilege to use the Super Bowl name doesn’t come cheap.

For example, in 2010, Budweiser signed a six-year Super Bowl sponsorship deal worth more than a billion dollars. So if Heineken all of a sudden started popping out Super Bowl ads and the NFL didn’t threaten litigation, Budweiser would certainly want to know why. Would any company put out that kind of money if the NFL didn't promise to aggressively pursue any and all violators?

This is also one of the reasons that the NFL’s Super Bowl ads are so expensive. Advertisers that pony up $4 million for a 30-second spot to reach 100 million-plus viewers have an explicit relationship with the NFL, while those advertisers' competitors haven’t paid for that right.

It’s our understanding, however, that the legal concept of "nominative fair use" allows the use of someone else’s trademark "for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising." The famous example of comparative advertising was Avis’ "We Try Harder" ad campaign, in which it compared itself to Hertz.

The problem for advertisers is that the NFL has been so aggressive about enforcing its trademark that it's succeeded in scaring other advertisers, not to mention reporters, critics, commentators, and the rest into self-censorship.

How far does it go? According to the NFL, a restaurant writing up a "Super Bowl menu" on a chalkboard wouldn’t be an issue. But a car dealer advertising that shoppers can watch the Super Bowl on its Samsung HDTV would (the NFL has a relationship with Samsung).

The NFL isn’t, to be sure, the only sports organization that’s diligent about its brand. The U.S. Olympic Committee has exclusive rights to use "Olympics" and the interlocking-rings logo. Soccer’s governing body FIFA requires countries hosting the World Cup to create special constitutional rights protecting advertisers.

Sure, the NFL risks bad press and public distaste for perceived heavy-handedness. But individual cases soon become old news. In the meantime, the league safeguards its billions in sponsorships and advertising.