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?

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?

Tis’ the season for football, not just on the gridiron, but also at the U.S. Patent and Trademark Office. Shortly after the “Minneapolis Miracle,” as we reported this week, the Minnesota Vikings applied for registered marks on the phrase. And with the “big game” approaching, teams have titles on the mind–even those that aren’t in contention (ahem, Green Bay Packers).

Just one week ago, the Green Bay Packers initiated an opposition proceeding with the Trademark Trial and Appeal Board (the “TTAB”) against McClatchy U.S.A., a publishing company associated with the Fort Worth Star-Telegram. The dispute stems from the Star-Telegram‘s use of “Titletown, TX” as the title of a 20-short-video documentary series chronicling “the story of the 2016 Aledo [TX high school] Bearcats and their quest for a sixth state [football] title in eight years.”

Courtesy: PBS

The Packers have owned registered competing marks, such as “Titletown U.S.A.,” “Titletown,” and “Titletown Towel” since as early as 1993 (though, the Packers assert they have “made widespread and continuous use” of the marks since the 1960s). The Packers appear to have only begun policing the Titletown name at the TTAB since the start of this decade, however, filing five oppositions against related marks, such as “Title Town Talk Show” and “Titletown Brewing Co.”

The Titletown mark has acquired additional meaning and value to the Packers since the organization opened a development district by the same name outside Lambeau Field last year. The Packers invested almost $65M to complete the first phase of the district by this fall. The Titletown District includes a hotel, sports medicine clinic, ice skating rink, restaurant, and artificial tubing hill. And this summer, it got its own logo:

Courtesy: Twitter

The Packers allege that the “Titletown, TX” mark and use in the Texas video documentary series creates a likelihood of confusion and dilutes the “Titletown” and related marks. Why? Because the Star-Telegram uses the mark in connection with football. And that conflicts with the general public’s wide recognition of the mark “as being associated with a single source, and further recognizing the single source as [the Packers].” And the Packers allege that the Titletown name is distinctive with regard to entertainment, video, news, and commentary related to football such that it has acquired secondary meaning. Not only that, but the Packers consider the mark “famous and exclusively associated with [the Packers] in the mind of the consuming public.”

Setting aside the high likelihood that several fanbases and regions across the United States would likely dispute the Packers’ allegations as to fame and widespread recognition and acceptance, the primary questions before the TTAB are whether the use of the “Titletown, TX” mark in the short-video series is likely to cause confusion, mistake, and/or deception as to the source or origin of goods and services. And, further, whether use of the mark is likely to dilute the distinct quality of the Packers’ marks.

Generally, the strength of a mark depends on whether it is arbitrary or fanciful, suggestive, or descriptive. Because the Packers argue distinctiveness and secondary meaning, the organization appears to contend that the mark is descriptive (the lowest strength outside of generic), implying that the Packers are title winners. And historically, this is true; the Packers have been league champions a record 13 times (9 more than the nearest rival team, the Chicago Bears). And the Packers have won three consecutive NFL titles twice. Interestingly, though, the Aledo Bearcats have also won three consecutive state titles twice. This could set up a descriptive fair use defense for Star-Telegram.

When it comes to likelihood of confusion, the primary factors include: whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines. The Packers might have a case, but not a very strong one. Star-Telegram‘s use may be related to how the Packers use the Titletown mark in some contexts. But the Packers use the Titletown mark in multiple ways, only one of which relates to reporting about football. Indeed, the Packers are beginning to use the mark more in connection with the new Titletown District. Star-Telegram‘s use is in a very different market: Texas vs. primarily Wisconsin. The use relates to different football leagues: high school vs. the NFL. And the marketing channels are different: online newspaper vs. broadcasts. Ultimately, it seems unlikely that a typical consumer would confuse the two uses: think cheeseheads vs. longhorns.

When it comes to dilution, the primary inquiry is whether the use of a mark is likely to impair the mark’s distinctiveness or harm the reputation of the famous mark. The Packers allege that “[a] recent survey concluded the term TITLETOWN is known to virtually the entire population of consumers surveyed and a substantial majority of those who are aware of the term TITLETOWN, associate it specifically with the Green Bay Packers.” This may demonstrate distinctiveness. On the other hand, it is difficult to see how a short-video series on successful high school football teams in Texas would harm the Titletown mark’s distinctiveness as to the Packers and professional football or harm the reputation of the mark.

McClatchy has until February 26, 2017 to answer the Packers’s opposition. By then, there will be a new reigning NFL titleholder, much to the envy of the allegedly-undisputed Titletown team. But even more to the Packers’s envy, the new titletown (or place of the title game) will technically be Minneapolis.

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 . . . .

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 . . . .

We’ve come a long way from April 1, 2017, until now, with the steady drumbeat — and ads galore — in preparation for the upcoming Super Bowl LII in downtown Minneapolis:

As the NFL promotes use of the SBLII hashtag, it is preparing to do battle, or at least stand in the way, of another hashtag mark that the USPTO published for opposition: #HereWeGo.

Turns out, the NFL and the Pittsburgh Steelers appear to be concerned with Jennifer Menichini’s application to federally register #HereWeGo for a variety of clothing items.

I’m guessing that the Steelers believe they have standing to try and block registration of Menichini’s claimed mark based on the Steeler’s fight song, apparently called “Here We Go.”

Stay tuned to see whether this results in a formal trademark opposition, as the deadline for the NFL and Steelers is currently the day before Super Bowl LII: February 3, 2018.

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!