This past Sunday, the College Football Playoff Committee unveiled the four college football teams that will be participating the very first playoff in college football. The festivities begin Jan. 1, 2015, with Oregon battling Florida State in the Rose Bowl followed by Alabama and Ohio State duking it out in the Sugar Bowl. However, as the debate regarding who will win the college football playoff continues on television, in the comment sections of websites, and around the water cooler, a different type of college football debate has been ongoing at the U.S. Patent and Trademark Office (USPTO).

Despite the players and teams being a mere three weeks from taking the field, the application to register the COLLEGE FOOTBALL PLAYOFF mark is still on the bench. The application suited up back on March 28, 2013 but is still no closer to registration today. The application includes the following identification of services:

Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing information, news and programming, scores, standings, statistics, and history, all in the field of the sport of football, via the internet

The examiner initially refused registration on the grounds that the mark was merely descriptive, but included a statement informing the applicant that the mark may be generic in connection with “organizing and staging college football games, exhibitions and tournaments.”

In response, BCS Properties (the applicant) claimed that COLLEGE FOOTBALL PLAYOFF was not descriptive but instead a suggestive mark. It made the oft-asserted but rarely successful argument that a component of the mark has multiple meanings and therefore consumers will need to exercise imagination, perception, and thought to determine the exact nature of the services. The applicant conceded that the Examining Attorney’s definition of “college” as “an undergraduate division of a school or university” was a possible definition, but argued that “college” can also be defined in other ways, including (1) a body of clergy living together and supported by a foundation; (2) a building used for an educational or religious purpose; and (3) a preparatory high school. The implied argument is that consumers encountering the COLLEGE FOOTBALL PLAYOFF mark won’t be certain whether these football tournaments involve university students, clergy roommates, buildings, or high school students. I don’t find this argument convincing, but maybe that’s just me.

The real emphasis of the response was on a claim of acquired distinctiveness. The applicant submitted numerous examples of news articles, websites, Facebook Groups, and evidence regarding viewership of the last BCS Championship Game (25.6 million viewers).

Overall, these are substantial numbers, but the Examining Attorney called an audible and denied the claim of acquired distinctiveness. Instead, the Examining Attorney issued a refusal on the basis that COLLEGE FOOTBALL PLAYOFF is a generic term for “college football tournaments.” Determining whether a mark is generic involves a two-step inquiry: (1) what is the genus of the services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods and/or services?

In support of the refusal, the Examiner relied upon the following:

  • The identification of services includes “college football” as part of the services;
  • Numerous news articles describe the mark as identifying a playoff system for college football; and
  • An article where the director of the College Football Playoff is quoted as stating: “We decided to call the playoff what it is – the College Football Playoff.

Because advertising and sales cannot turn turn a generic term into a trademark, the claim of acquired distinctiveness is moot if the term is generic. In the alternative, the Examiner maintained the merely descriptive refusal, noting that given the highly descriptive nature of the mark, the evidentiary burden to prove acquired distinctive is much greater than it might be for less descriptive marks.

After failing to move the chains with its first response, the applicant filed its second response. It argued that the genus of goods is not “college football playoffs” but instead simply “football.” It also argued that the public does not use the COLLEGE FOOTBALL mark to refer to “entertainment services.” Notably, the applicant provided no evidence to support this claim. With regard to potential acquired distinctiveness, the applicant submitted evidence that its twitter account had over 30,000 followers, its Facebook page had more than 200,000 fans, and noted the numerous news articles referencing the upcoming college football playoff. Besides, the applicant argued, third-parties could use a number of other names for a “college football series,” such as “Collegiate Football Tournament,” “College Football Showdown,” [and] “University Football Series.”

It was a good effort, but ultimately unsuccessful as the Examiner issued a final refusal on August 26, 2014. The examiner noted again that the phrase “college football” is in the identification of services and therefore the proper genus is not simply “football.” The Examiner also noted that the evidence supplied by the applicant makes clear that its mark will be used to identify “those college football games that come after the end of the regular scheduled season that will be used to determine the college football champion.” The examiner also rejected the evidence of acquired distinctiveness, stating that it merely showed that college football itself was popular, not that the mark had obtained acquired distinctiveness.

BCS Properties will have another shot at filing a response to try to change the examiner’s mind. Unfortunately though, the application may have been doomed as soon as the name was chosen. It seems like ages ago, but after the announcement of the new name, there were laughs had as to the less-than-creative name (for example, here, here, and here). Most of the chuckling was that the BCS paid a marketing firm to come up with the name (Premier Sports Management, for the curious). For what it’s worth, I don’t blame the marketing firm. As some of the articles point out, after the BCS era, the goal may have been to simply find a name that the public couldn’t trash.

But even though the hurdle was going to be high, the applicant got off to a false start by including the phrase “college football” in the actual identification of services. The fact that the applicant’s director was quoted as stating that the College Football Playoff name was chosen “because that’s what it is” certainly doesn’t help either.

Yet it isn’t a lost cause. These types of office actions require thoughtful and well-planned arguments, and that planning begins with the application (i.e., not digging yourself a hole). Trademark examination is a unique situation as it isn’t adversarial in the same sense of a lawsuit. Instead, the examiner is both the adversary and the judge. In light of this, organization and word choice can make or break a response, in part because trademark law requires a highly subjective analysis. It isn’t about “tricking” an examiner, it’s about defining and framing the legal inquiries and burdens in a way that makes sense with your particular facts.

The applicant has until February 6, 2015 to respond to the final office action. This gives the applicant additional time to gather evidence regarding public understanding and use of the claimed COLLEGE FOOTBALL PLAYOFF mark. However, I’ve got a feeling that even if BCS is unsuccessful at changing the examiner’s mind, the game will extend into overtime at the Trademark Trial and Appeal Board.