As we move into Week 2 of the NFL, the big clash in North Country is Sunday’s Green Bay Packers – Minnesota Vikings game. All the buzz is whether the second-coming-of-Favre Aaron Rodgers will prevail over the vaunted Vikings defense. But here in my trademark bubble, I’m more interested in the Jacksonville Jaguars versus former Jaguar player Dan Skuta. This isn’t a contract negotiation battle, but instead a dispute over who owns the claimed trademark rights in the word SACKSONVILLE. The dispute is now the subject of a pending opposition at the Trademark Trial and Appeal Board.

In the Notice of Opposition to the team’s application, Skuta claims to have been the first to coin the term “Sacksonville,” back in July of 2015, but his pending application was refused based on a possible likelihood of confusion with the team’s already filed application. He created a Twitter account and hired a graphic designer to create the logo below, which appears on Skuta’s website.

 

In the team’s application to register the claimed #SACKSONVILLE mark, the Jaguars claim a first use date of September 1, 2017.  However, the team has the ability to present evidence of use earlier than the date of first use listed in the application. One article notes that the team has used the phrase as a social media hash tag at least as early as 2013. But in most circumstances, merely using a word as a social media hashtag does not constitute use in commerce.

Unsurprisingly, one local Jacksonville news outlet is skeptical, siding with the team over a “forgettable linebacker . . . who may have been better at anticipating trademark uses than he was at reading offenses.”

It is possible that Skuta may have used the mark in commerce before the team. Skuta hasn’t made his case any easier by including in the logo what appears to be a jaguar skull and the same Jacksonville Jaguar teal color. On top of this, the play on words with “Jacksonville” potentially creates association with the team, too.

It’s a bit of a mess: are there even any trademark rights and, if so, who owns them? It seems the team likely should be the owner, but perhaps they fumbled the rights along the way. We may have to wait for the Trademark Trial and Appeal Board to weight in to see who emerges from the scrum with the ball.

Not all ambush marketing is created equal. Some can cross the line and create a likelihood of confusion as to sponsorship. Some falsely advertises. But, some is totally fair use and lawful.

This current promotional banner by La-Z-Boy is capitalizing on the excitement surrounding the upcoming Super Bowl weekend festivities, but without reasonable risk of heat from the NFL:

The same can be said for this Lunds & Byerlys in-store signage, with the local grocery chain having tiptoed around the issue entirely by using the Big Game code word instead:

Love the fine-print shout out to local darling, Surly’s Cynic Pale Ale, and the additional shout out to Surly’s “Over Rated” — and clever jab at West Coast IPAs — thankfully no risk of offending all the visiting fans from the East Coast for Super Bowl LII.

By the way, since the Home Team, won’t be playing, merely hosting, which team do you favor from the East Coast, the Philadelphia Eagles or the New England Patriots?

Well, it was fun while it lasted. Some incredible moments last longer than others, and when the stars are all lined up, they can even translate into a movement. Yet, the blistering loss in Philly proved that our hope of being more than a host for Super Bowl LII, wasn’t meant to be.

Minnesota was seriously buzzing for the past week, following the incredible final-second touchdown score by Stefon Diggs, to launch the Vikings past the Saints, sending them to Philly to be favored as the likely NFC champion for Super Bowl LII. No more Dilly Dilly, Vikes couldn’t Bring it Home.

Sadly for the Minnesota Vikings and their fans across the country, the meaning of the Minnesota Miracle and Minneapolis Miracle phrases have been relegated to a brief moment in history — memorable no doubt, but memorable and meaningful for much less than most hoped for here.

Trademark filings reveal that the Minnesota Vikings hoped for more too, and likely hoped to cash in more too, within twenty-four hours of the infamous catch, the team sought to turn the meaning of Minnesota Miracle and Minneapolis Miracle into exclusive and proprietary trademark rights.

Team ownership filed a few used-based applications (here and here) and a pair of intent-to-use trademark and service mark applications (here and here) covering virtually every good/service known to men, women, and children, including the proverbial kitchen sink. Are you wondering how many of those items could withstand a challenge on the requisite bona fide intent? Let’s say I am.

It remains to be seen whether the USPTO will issue the increasingly common failure to function and informational refusals against the use-based applications.

It also remains to be seen whether the buzz around the Vikings several trademark applications concerning those phrases will last longer than our week of euphoria.

Perhaps even most interestingly, no one seems to be reporting about the apparent lack of alignment on who owns what surrounding the Minnesota Miracle and Minneapolis Miracle phrases, with quarterback Casey Keenum (a little slow on the draw) filing for both phrases as trademarks (two days after the Vikings did), and with Stefon Diggs apparently selling his own shirts, here:

Wow, words don’t and could never describe the emotions behind the last ten second fourth-quarter TD and Vikings win over the New Orleans Saints — Who Dat Nation — last night in Minneapolis:

Hat tip on the title, to a lubricated fan leaving U.S. Bank Stadium after the game — the whole Dilly Dilly thing seems kind of silly, but it’s fun to say, thanks Anheuser-Busch and Wieden+Kennedy:

The Dilly Dilly marketing phrase has gone viral and taken on meme status, so beyond the intent-to-use filing by Anheuser-Busch, many third party trademark filings are piling on, stay tuned.

Meanwhile, the Vikings are one step closer to Super Bowl LII . . . .

Recently traded this picture (credit to this G, not that one) for sub-zero temps in the Twin Cities:

Wonderful time spent with family; looking forward to sharing lots of trademark stories in 2018.

Do you have any wishes for 2018? Do you have any 2018 resolutions you’d like to share?

The former implies a lack of control. The latter suggests an ability to control with some discipline.

My wish for our Vikings is to enjoy home field advantage during Super Bowl LII, and win!

My 2018 New Year’s Resolution is modest and achievable: Continue rising 30 minutes earlier, to enjoy a good stretch complete with deep and inspiring thoughts.

Happy New Year to each and every one of you!

This image was captured from my office window last Friday, just before I left town for Miami to speak (again) at FUSE (I’ll be back here later with my FUSE thoughts, but in the meantime):

StadiumUM

Looking back, I guess it must have been an April Fool’s Day prank, simply intentionally stalled work in progress, not evidence of any hesitation or re-thinking the full name: U.S. Bank Stadium.

– Derek Allen, Attorney –

Quentin Tarantino is suing Gawker Media because it leaked his script and Northwestern football players are attempting to unionize in yet another attack on the NCAA  — two stories that would otherwise be right in my wheelhouse — but, it’s Super Bowl week so I’m pretty sure I’m constitutionally required to write something about football.

Public funding for NFL stadiums has been a hot topic here in Minnesota over the last couple years as the Vikings pushed for a replacement for the Metrodome.  Ultimately, an agreement on the new $1 billion stadium was reached with the team and the public splitting the bill 50/50.  This tends to be the case all over the country, with the public paying for a large chunk of almost every new stadium (MetLife Stadium, the home of this year’s Super Bowl, is the rare case of a privately-funded new stadium).  Some believe that the NFL intentionally doesn’t have a team in Los Angeles because it provides NFL owners with an easy threat when politicians balk at paying for a new stadium with public funds: “Pay up or I’m moving the team to LA.”  And because no politician wants to be blamed when a local team moves (just ask those who were in office when the Minnesota North Stars moved to Dallas), the team usually gets the stadium it wants.

Of course, any profits that the team gets from the new stadium usually go to the team’s owners, which seems to create a situation where really rich people get even richer using everyone else’s money.  Throw in the fact that the NFL is considered a non-profit (and gets the tax breaks that come along with that designation) and you can begin to see why some people are starting to cry foul on the whole situation.

Into this problem steps Gregg Easterbrook (brother of my former law school professor and noted jurist, Frank Easterbrook) with an interesting proposal.  He argues that “lawmakers — ideally in Congress, to level the national playing field, as it were — should require that television images created in publicly funded sports facilities cannot be privatized.”   This would almost certainly find NFL owners sucking it up and paying for their own stadiums rather than giving up the billions and billions of dollars in television revenue that would go away if anyone were allowed to broadcast NFL games.  It seems like a pretty good proposal to me — what about you Duetskateers?

 

As I was perusing ESPN.com, I came across an interesting installment on their Page 2 Power Rankings. For the uninitiated, Page 2 Power Rankings is a light-hearted ranking of the top sports-related stories grabbing headlines over the previous week (or two, or three, I’m not sure of the frequency).  As a Minnesotan and an NFL fan, my interest was piqued by this week’s #1: Stone Cold Vikings. The author noted the following:

The show biz axiom is that ‘The show must go on.’ And sailing this flaming Vikings ship past the point of no return into a Monday night showdown with the Chicago Bears can only end in glorious disaster. Talk about the law of unintended consequences for the sponsor of Minnesota’s college football park of TCF Bank Stadium. It’s not their fault that the cold weather will chill their image in a place never designed to hold games under such frigid circumstances. Right now, the best idea for keeping the field from freezing once the heated tarps come off is to have a halftime show in which they burn their customers’ life savings at midfield. You think we’re joking, but do you really doubt there isn’t some bank in America in which the fine print of its customer service agreement says it’s entitled to loot your holdings so it won’t lose its shirt on staging an ill-conceived desperation spectacle? Hope you at least got a free toaster out of the deal to keep you warm in retirement.

For those of you who are longtime readers of our blog, you might recall an earlier piece I did on building naming rights. I’m also a huge proponent of evaluating “unintended consequences” when making branding decisions. For example, I previously noted the unintended consequences of hitching your brand to a tarnished star, promoting rabid fan bases, suing a poor college kid, and holiday creep. So, I was elated to see an overlap in building naming rights and unintended consequences!

The author above apparently thinks that TCF Bank is responsible for actually running the stadium and making event decisions. While I suppose this is a possibility, building name deals are typically a glorified billboard, where the “sponsor” simply pays a lump sum fee to attach its name. I would find it highly unlikely that TCF Bank has any significant control over the stadium itself. Nonetheless, TCF Bank is now the victim of potentially negative brand associations. In my mind, situations like this further undermine the already sketchy value proposition associated with building naming rights.    

This little gem arrived yesterday, basically an email promotion for this weekend, featuring Randy Moss and celebrating his return to the Minnesota Vikings:

Of course, I’m thrilled too, that Randy Moss has returned to play ball in Minnesota, but that doesn’t mean we forget all about his legal rights (name, image, likeness, right of publicity, to name a few), not to mention the legal rights, trademarks, and trade dress of the Minnesota Vikings and the NFL.

By the way, the purported disclaimer at the bottom of the promotion saying: "All registered trademarks are the properties of their respective owners" doesn’t help either.  Putting aside the unanswered question about any unregistered trademarks shown in the promotion, all this statement reveals is that Lions Tap knows it doesn’t own what it is using, and it begs the question of whether the necessary permission was obtained from the necessary owners.

To the extent my assumption is correct, that Lions Tap didn’t obtain the necessary license and permission to run the above promotion, it appears Lions Tap may have forgotten all the intellectual property law it sought to teach McDonalds earlier this year when it filed a suit for trademark infringement over the Who’s Your Patty tagline . . . . 

Continue Reading Honoring Randy Moss Doesn’t Make It Fair Use

As an attorney, one of my most oft-committed sins against the art of persuasion is forgetting that brevity is key. Get in, deliver your message, and get out.

In contrast, concise delivery of a message is something that good branding and advertising generally excel at. I say "generally," because as I was sitting at/in/on/around/near Mall of America Field at Hubert H. Humphrey Metrodome watching the Minnesota Vikings de-pants the New York Giants to get the #2 Seed in the NFC playoffs, I began to think of other sponsorship mouthfuls that make me question whether any message really gets transferred to the recipient. Given my football frame of mind, the only thing I could think of was the horrendous rebranding of the Chicago Bears as Bears football presented by Bank One.

But, that also get me thinking about some sponsorship "eyefuls" which often leave me confused. For example, there’s this:

(If you prefer live action…)

This…

And this:

While I can’t claim to be an expert on advertising expenditures, it seems to me that budgets may be better spent trying to distinguish yourself, rather becoming another voice in a sea of noise.