Over the last decade, we’ve covered Super Bowl topics, it’s that time of year again!

We’ve probed the NFL’s overzealous activities and asked hard fair use questions.

And, with Big Game LII in our backyard, we had a front row ambush marketing seat.

With digital marketing, that front row seat can be anywhere your iPhone takes you:

The top half of the email advertisement from Tuesday, landing in my inbox (shown above), seems to have a better argument for a nominative fair use defense than the the bottom half of the same ad (shown below), agree?

Assuming Birch’s is not an actual licensee, seems to me a rather difficult argument that use of the Super Bowl LIII logo is really fair and necessary for communicating truthfully, but, what say you?

UPDATE:

Hot off the email press and inbox from yesterday, here is another Super Bowl ambush, note their favoring of “Big Game” over “Super Bowl”:

So, they may have avoided the NFL’s wrath, but what about the Patriots and Rams logos on the helmets, fair use, or not, friends?

Here’s to looking at you again, James!

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

Besides some team tournament sadness, the only thing sad about our remarkable Creative Brand Protection Event was our camera problem, so these few photos are all we have to share, so sorry:

From left to right above, special thanks to Shaelyn Crutchley (former PepsiCo, now Volo Creative), Aaron Keller (Capsule), and Rosalie O’Brien (University of Minnesota), they were fantastic, and their valuable insights about Super Bowl LII, Ambush Marketing, and Brand Protection Strategies were nothing short of brilliant.

Equally exceptional were our three alumni Trademark and IP attorney panelists, special thanks to Sarah Lockner (Ecolab), Sharon Armstrong (3M), and Susan Perera (United Health) — their energy and passion, as guardians of the “most important assets” of their companies, was wonderful to witness and experience. Amazing leaders, they offered very balanced, matter-of-fact, and pragmatic insights on how they approach their important brand protection work and certain trademark enforcement tools.

Duey certainly wasn’t sad either, he was the star of this 9th birthday cake (thankfully captured on my iPhone before cutting), congrats Duey, and thanks for ALL those who joined us, as we look forward to Creative Brand Protection II, date to be announced soon, likely late June, so stay tuned.

Well, it is the end of February and the Super Bowl hangover in Minneapolis might finally be over. But that doesn’t mean there isn’t still time to analyze trademarks related to the Big Game. Much ado was made about the Eagles’ “Philly Special” trick play.  When a catch phrase is born, it is often followed by trademark filings by opportunistic individuals or those teams, businesses, or celebrities associated with the mark in the first place.  Typically these filings are for apparel items and other novelty items like we saw with the Minneapolis Miracle.

PHILLY SPECIAL is a little “special” in this case because, while there were filings by the Philadelphia Eagles and individuals (presumably, Eagles fans) from Texas to New Jersey to Florida for the mark for apparel and novelty items, the historic Yuengling brewery also filed for PHILLY SPECIAL for use in connection with beer.  They even seemed to have a marketing strategy forming behind it and, well, Yuengling’s logo also incorporates an eagle.  A natural fit.  If you aren’t familiar with Yuengling, it’s a brewery based in Pottsville, Pennsylvania and the oldest operating brewery in the U.S.  It also has a bit of a cult following throughout the East Coast – you know, where there are Patriots fans still reeling from a Super Bowl loss, Ravens fans, and most importantly that other NFL team in Pittsburgh and its Steeler Nation of fans.

With such a wide range of loyal drinkers, this trademark filing associating such an iconic brand with a team seems like an errant throw.  Yuengling expressly abandoned the application last week citing a desire to “allow the Eagles to have full, unfettered access to all rights and uses of the term ‘Philly Special.’”  While it’s unclear whether the Eagles asked Yuengling to withdraw the application (although I would be willing to bet that they did), the audible was probably the right call.

Plus, given certain factions of the Eagles fan base, who wants to have a Philly Special hurled at them?  That honor should only be reserved for Nick Foles with an actual football.

 

We’re always looking forward, but every once in a while we look in the rear-view mirror and become amazed at how far we’ve come since our humble beginnings a short nine years ago.

Well, it’s almost time to celebrate another birthday here at DuetsBlog, and if we make it to March 5th, Duey will be ecstatic, thanks so much again to our many devoted readers and guest bloggers.

On Thursday March 8th, we’ll be doing more than cutting and sharing slices of our 9th Birthday Cake (promise it will be fresh, not four days old), we’ll be educating and entertaining our guests.

Beginning at 4 PM, in our newly reimagined cool office space, we’ll host a few hours of trademark and brand protection education, entertainment, food, drink, celebration, and conversation.

For the educational portion of the evening, we have assembled two dynamic panel discussions with valuable insights and guidance from a pair of national branding and design experts and leading trademark counsel for some very notable brands with global footprints.

Yours Truly, will moderate this panel of accomplished luminaries:

  • Shaelyn Crutchley, Former Senior Director, Head of Design – N. American Beverages, Pepsico
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Rosalie O’Brien, Senior Associate General Counsel, University of Minnesota

Our focus will be on the development of a creative, coherent, and compelling brand protection strategy. In addition, we’ll look back together on Super Bowl LII through our collective brand protection eyes, discuss so-called trademark bullying, and the latest on trademark fair use.

Brad Walz, Winthrop Shareholder and Adjunct Professor, University of St. Thomas School of Law Trademark Clinic, will moderate a panel discussion joined by some of our esteemed alumni:

This panel will focus on the implementation and execution of creative trademark and brand protection strategies. Attendees will learn about the effective and efficient use of trademark watch services, brand registries, website complaint programs, USPTO Letters of Protest, cease and desist correspondence, TTAB and UDRP proceedings, and also, when federal district court may be necessary to achieve goals.

Space is limited for this special event, but we have set aside a few seats for readers who may not have received invitations, so please let me know if you’re interested in joining us.

Remember this North Memorial Health billboard ad — sporting a plain and literal Google reference — that we wrote about a few months ago, where nominative fair use was pretty clear to me?

Well, a new set of North Memorial billboard ads rolled into to the Minneapolis skyway system, just in time for Super Bowl LII, with essentially the same message, but without a Google mention.

Do you think Google was behind North Memorial’s move away from the Google reference, or was it part of the original plan to grab attention, then migrate to a more generic online search mention?

Does North Memorial showing it is able to communicate essentially the same idea without Google’s help impact the nominative fair use analysis? So, how do you come down on this one?

In case you’re wondering why I’m not writing about Super Bowl LII and the television commercials, as has been typical here on the day after, let’s say I’m still letting it sink in, so stay tuned.

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:

Downtown Minneapolis is starting to come alive for upcoming Super Bowl LII, you can feel the energy building and commerce flowing, new ads and signage being erected almost daily:

What do you think, is the Super Bowl reference in the above temporary sign, a fair use? More particularly, nominative fair use? I do. But, will the NFL agree? Stay tuned.

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 . . . .