National Football League

We continue to have Super Bowl LII on our minds here in the Twin Cities. It’s hard to avoid thinking about the upcoming “Big Game” with ads like these blanketing our skyway maze:

Turns out, everyone wants to have a little piece of the action in this upcoming event, even without the formality and cost associated with sponsorship, some call it ambush marketing:

Ambush marketing is not necessarily unlawful. It’s tricky, but I’m guessing the above ad may have cleared a legal review. No obvious conflicts with federally-registered rights, it appears.

Having said that, does this little guy change your view on things? Look familiar? It appears to be the same Wilson NFL Pee Wee Touchdown football without the name brands shown:

I’m thinking the JB Hudson ad employed a little airbrush strategy, or at least some strategic and highly precise palm expansion and placement in hiding the Wilson and NFL logos.

Actually, if so, it’s a good move, but will it be enough — especially given this website link — to avoid the aggressive NFL Super Bowl sponsorship police?

Who owns rights in TOUCHDOWN for footballs, if anyone? Anyone?

Neither Wilson nor the NFL appear to own federally-registered rights in TOUCHDOWN for footballs, but do common law rights exist?

If so, who owns them, the NFL or the maker of the NFL’s official game footballs, Wilson?

Moreover, did legal review consider non-verbal marks? What about the stitching design bordering the football laces? Non-traditional trademark? Functional? If not functional, fair use?

So much to think about as we anxiously await the Big Game in our own chilly backyard . . . .

Now that Super Bowl XLIX is in the rear view mirror, and the New England Patriots have been duly congratulated for winning anything but a Mediocre Bowl, for those of us with no pigskin in the big game this year, it’s time to think about the possible magic of Super Bowl L.

Wait what? Is that really a good idea, given the recognized meaning of the L-word?

After all, Glee and others have done too impressive of a job cementing the “loser” meaning to L, even though another more positive alternative branding cliche exists: Leadership (as we’ve noted before).

The NFL began using Roman numerals to designate each Super Bowl, beginning with the single-letter V in 1971 for the 5th Super Bowl, and continuing through X to designate the 10th Super Bowl in 1976, all the way to XLIX as depicted above.

However, back in June 2014, the NFL finally announced it would lose the Roman numeral graphic design, kind of like the disappearing 13th floor in an elevator, because Super Bowl “L” wouldn’t be aesthetically pleasing by itself, at least to some — probably unlucky too.

So, next year, Super Bowl L won’t exist, instead we’ll be talking about Super Bowl 50, the Golden Bowl, to be played in the Golden State at the home field of the San Francisco 49ers, who mined for gold back in the day.

Then, after a one year hiatus from that pesky singular Roman numeral, the NFL plans to be back in the Roman numeral business with Super Bowl LI in Houston, and more importantly, Super Bowl LII in Minneapolis in 2018. Make sure to come see us!

I’m thinking the NFL probably made the right call in losing the solo L for the 50th Super Bowl, the graphic on the left below just doesn’t work and only invites ridicule — but, do our readers who are graphic designer types agree? Was there no possible way to sell an elegant solo L?

 

 

 

 

 

 

 

 

 

 

 

 

What do you think, will the Roman numerals make a comeback in Houston for Super Bowl 51?

Oh, I almost forgot, what did you think of the Super Bowl ads?

Budweiser tugged at the heartstrings again, this time with Puppy Love.

Seems like there were lots of ads promoting other television programs — since I’m a huge fan of The Voice and Mad Max Beyond the Thunderdome, that combo was hard to beat for me.

Fiat’s use of a little blue pill to introduce the new 500X made me, as a trademark type, wonder what Pfizer thought about it, can you say Viagra?

Does Fiat not appreciate that Pfizer also owns a non-traditional trademark registration for the color blue as applied to a diamond shaped dosage tablet?

Was Fiat’s use of a hexagonal-shaped tablet enough to avoid the scope of non-traditional trademark rights held by Pfizer? Might some have thought it simply was another funny co-branding Super Bowl ad?

So, which Super Bowl ads were your favorites and why?

As many anxiously await the Trademark Trial and Appeal Board’s (TTAB) decision in Blackhorse v. Pro Football, Inc., a trademark cancellation action seeking to revoke six federal service mark registrations containing the R-Word (issued between 1967 and 1990), the pressure is mounting for the NFL team located near our Nation’s Capital to stop postponing the inevitable: A name change.

Change would be good. It is worth noting the team has enjoyed only six winning seasons since the original trademark challenge on disparagement grounds was filed more than twenty years ago, on September 10, 1992, in Harjo v. Pro Football, Inc.

Although he has vowed otherwise, more and more are realizing the time is long overdue for the current owner of the Washington Redskins to engage a naming firm and creative design team to retire the racial slur and craft a new name and visual identity for the football club. In addition to the mountain of evidence before the TTAB demonstrating the offensiveness of the name, earlier this year ten members of Congress introduced legislation and called for a name change, as did the Oneida Indian Nation, and several prominent writers will no longer use the term when reporting about the team.

Most recently, President Obama weighed in on the issue last Friday, indicating if he owned the team, he’d “think about changing the name,” since the name offends “a sizable group of people.”

The Blackhorse decision could be rendered any day, week, or month now, as oral argument at the final hearing was completed on March 7, 2103, more than 8 months ago. Bloomberg recently posted the video of an informative interview with counsel for the Native American petitioners, explaining the details of what is at issue in the case.

What has not gotten any attention — that I’ve seen anyway — is the quiet behind the scenes activity at the USPTO, demonstrating the USPTO’s consistent (and in my view, correct) position that the term REDSKIN (in singular or plural form) is not suitable subject matter for federal registration as it “may disparage Native American persons” in violation of Section 2(a) of the Lanham Act, as illustrated by this excerpt from a 2011 registration refusal of the term in connection with computer software:

“The  attached dictionary evidence shows that “REDSKIN” is a disparaging slang term  for a Native American.  The American Heritage® Dictionary of the English  Language (2009) defines “REDSKIN” as “offensive slang” that is “[u]sed as a  disparaging term for a Native American”; Webster’s  New World College Dictionary (4th ed. 2010) defines “REDSKIN” as  “an American Indian: now considered by many to be an offensive term”  (see attachments from http://education.yahoo.com/reference/dictionary/entry/redskin and http://www.yourdictionary.com/redskin).”

The only exceptions made to this rule understandably have been when the context of the use relates to peanuts, potatoes, or beans — not Native Americans or Native American imagery.

Indeed, every one of the Washington football team’s applications (containing the R-Word) filed since the original challenge in 1992 have been refused on the same disparagement ground, and the team either has elected to voluntarily drop them or have them suspended pending a final outcome in the pending cancellation action.

For example, back in August 1992, about a month before I filed the original Petition to Cancel in the Harjo case, contesting all of the team’s then-existing federal registrations for marks containing the racial slur, the team filed a new application to cover goods as opposed to services, for the first time. It sought registration of WASHINGTON REDSKINS for all kinds of clothing in Int’l Class 25 and “trading cards, posters, magazines and books regarding football, postcards, calendars, wrapping paper, paper gift boxes, paper stickers, paper napkins, paper towels, posterbooks, notepads, paper hats and greeting cards” in Int’l Class 16.

Then, in August 1999, the team filed an application to register the REDSKINS BROADCAST NEWORK logo for “production and broadcast of radio and television sports and human interest programs.” Both of these applications were refused registration under Section 2(a), both had a Letter of Protest granted with nearly 500 pages of evidence showing the offensiveness of the term, yet both were suspended under Harjo and remain suspended pending the outcome in Blackhorse.

Even the NFL’s application to federally-register a vintage Boston Redskins logo suffered the same refusal, but the application remains suspended pending a final outcome in Blackhorse. And, as was the case in the two team applications referenced above, a successful Letter of Protest also was granted back in 2010, as to the Boston Redskins logo, providing over 500 pages of evidence as to the disparaging nature of the R-Word.

So, if the Examining Corps at the USPTO already has made up its mind on the issue, you might ask, why have those refused applications been allowed suspension for years pending a final outcome in the Harjo and Blackhorse cancellation proceedings? After all, the Blackhorse cancellation proceeding will answer the question of whether the evidence shows that the team’s marks containing the R-Word were in violation of Section 2(a) at the times of their registration — between 1967 and 1990.

To the extent the NFL and the Washington Redskins football club believe that “kicking the can down the road” — on the initially refused but pending and suspended applications — was or is a good strategy, the growing support for a name change would seem to indicate otherwise. Even in the unlikely event the TTAB declines to order cancellation of the registrations containing the R-Word, and all appeals are exhausted leaving the same result, such a result would not preclude the USPTO from finding the R-Word inappropriate for federal registration today and tomorrow, and the next day.

And, in the unlikely event the USPTO were to be somehow persuaded by the team or the NFL to eventually publish those marks for opposition, they certainly would be opposed, and those opposition proceedings would not require any historical evidence (e.g., in the 1967 – 1990 time frame), because the issue would be: Do the marks consist of or comprise matter that may disparage Native American persons? Now, not then.

So, where do you come down on this issue?

Do you have any creative naming ideas for the team’s inevitable name change?

For prior coverage of this issue on DuetsBlog, see:

UPDATE: Bob Costas of NBC Sports on R-Word (Sunday Night Football, October 13): “It’s an insult, a slur.” See also: http://www.nbcsports.com/nickname.

ADDITIONAL UPDATE: David Gregory of “Meet the Press” on Monday morning’s Today Show (October 14): On changing the R-Word  team name, “it may be just a matter of time.”

–Dan Kelly, Attorney

There have been a number of NFL headlines out of Minnesota this season, most of them ranging from ridiculous to deflating, that is, if you’ve been following the (mostly) hapless Vikings and their hapless stadium.

Here’s one from last week:  the NFL won a motion for partial summary judgment in Minnesota’s Federal District Court against Titlecraft, Inc., a maker of fantasy football league trophies, finding that the Titlecraft trophies infringe the NFL’s copyright in the Vince Lombardi Trophy (opinion here).  Here’s a visual comparison:

vs.

The NFL has trademark claims as well that are as yet unresolved.  By way of review, copyright and trademark protect different aspects of intellectual property.  Copyright protects the artistic expression in a creative work (in this case, the sculptural work of the Lombardi Trophy).  Trademark rights protect the goodwill of the source of goods or services.  The tests for infringement are different, too:  substantial similarity for copyrighted works and likelihood of confusion for trademarks.

There are aspects of both copyright and trademark rights here, and this case, even at this early stage, is a good reminder that comprehensive intellectual property protection is often multi-dimensional.  If all of a company’s IP assets are all in any one of the patent, trademark, or copyright “baskets,” it is worth exploring whether there are additional ways to protect those assets.

I have to say, as an aside, that this David v. Goliath case seems to have the potential for negative PR for the NFL, even in victory, as it seems that many NFL fans are active in fantasy football leagues.  Perhaps Titlecraft will come away with a license to sell wood reproductions of the Lombardi Trophy.  We will, of course, report on developments.

Happy New Year, and please enjoy only genuine trophies during this year’s fantasy football championship.