Seattle Trademark Lawyer

No need to call it the “Big Game.”

If you’re having people over to watch the Super Bowl, feel free to say you’re having a Super Bowl party.

There’s much in the news about NFL’s heavy-handed trademark enforcement. They’re bullies. But pressuring people to make up silly code names for the Super Bowl to avoid using its trademark has no basis in the law, at least not in the Ninth Circuit.

Others may differ (not counting the NFL, who I’m sure will differ). But in the Ninth Circuit, as long as you don’t imply some sort of sponsorship or connection with the trademark owner, you can use a trademark without the owner’s permission in order to refer to the trademark owner. It’s a form of a fair use known as “nominative” fair use. In my opinion, that applies to the Super Bowl trademark.

The Ninth Circuit described the elements of the nominative fair use test as follows:

“First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.”

Here, there’s no non-awkward way to refer to the Super Bowl without saying “Super Bowl.” (I don’t count “Big Game” as being non-awkward.) Therefore, speakers can have at it, as long as they don’t use logos or other trappings that would make someone think your Super Bowl party is actually sponsored by the NFL. (Now that would be a party!)

This is just like Terri Welles truthfully describing herself a former Playboy Playmate of the Year without Playboy’s permission. When Playboy sued, the Ninth Circuit said she had every right to use those trademarks because:

“[T]here is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the ‘nude model selected by Mr. Hefner’s magazine as its number-one prototypical woman of the year 1981’ would be impractical as well as ineffectual in identifying Terri Welles to the public.”

As far as I’m concerned, the same is true for “Big Game.”

Just say Super Bowl. No one will be confused.

P.S. Samsung had great fun with the NFL’s overbearing trademark enforcement during last year’s Super Bowl. It was the best commercial shown because it showed how comically absurd the NFL’s enforcement practices really are.

As previously discussed (here), I believe that state trademark registrations have their place in forming a smart trademark protection strategy.

Here’s another reason why they can be useful: enforcing your rights with online portals like Amazon, eBay, and Google. Generally, these providers only act on complaints about counterfeiting or trademark infringement if the complaining party can establish its superior rights by supplying a registration number. At least with Amazon (with whom I’ve recently dealt), this includes state trademark registrations.

Assuming state registrations continue to do the trick (and are similarly acted on by eBay, Google, and other providers), they can be an attractive option for a trademark owner if its goal is to stop online infringement. They’re quick (in Washington, you can get a registration certificate within a week or two), they’re cheap ($105 in filing fees in Washington, including expedited processing), and they’re almost automatically granted.

If you want to maximize your trademark rights, it’s no substitute for a federal registration. But if you only do business locally, or want a quick credential to leverage with online providers, a state registration can be an option to consider.

What’s a trademark owner to do if the PTO denies an application for federal trademark registration because it finds the mark is “merely descriptive”?

A mark is merely descrptive under U.S. trademark law if it immediately conveys information about the good or service being sold in connection with the mark. In such cases, the mark does not function as a trademark because it only tells consumers about what’s being sold, rather than who is selling it. The latter message is what a trademark needs to convey.

That means descriptive brand names like SPEEDY AUTO GLASS and SEATTLE’S BEST COFFEE are not registrable on the PTO’s Principal Register — that is, until they achieve “secondary meaning.” Secondary meaning occurs when the mark has become linked in consumers’ minds with the trademark owner, rather than the trademark owner’s goods. In other words, the primary, descriptive message has been subverted by the secondary meaning that identifies the source of the goods or services.

Proving secondary meaning is what’s needed to overcome the PTO’s objection. This is first shown through longstanding use. The statute sets the usual minimum benchmark at five years, but the PTO often requires more evidence of secondary meaning than that. Even ten or fifteen years’ use may not be enough.

So what else proves secondary meaning? Evidence of what one might expect to indicate that consumers have come to associate the brand with the owner: dollar sales under the mark, advertising figures, samples of advertising, and consumer or dealer statements that the mark is recognized as referring to the trademark owner. Generally, the most persuasive evidence shows the owner’s longstanding use of the mark, lots of money spent on advertising, and lots of sales made. This includes evidence of advertising on TV, radio, in print, on the web, and any other evidence that shows that consumers understand descriptive marks like SPEEDY AUTO GLASS and SEATTLE’S BEST COFFEE point to a specific source, rather than a description of goods or services.

If an owner doesn’t have this evidence, or the PTO finds the offered evidence isn’t enough, the owner can still obtain registration by amending its application for registration on the Supplemental Register. Doing so loses the benefits of registration on the Principal Register — including the presumption that the owner is the exclusive nationwide user of the mark in connection with the specified goods or services — but it still entitles the owner to use the Circle-R symbol that indicates its mark is registered. It’s not a result an applicant generally hopes for, but it is better than nothing.

Foreign owners may not have any trademark rights in the United States.

Despite treaty provisions that say otherwise, U.S. courts generally do not recognize foreign trademark rights in the States — no matter how well-known those marks might be abroad. That means someone in the U.S. can copy your mark, imitate your business, and open up shop under your name. If you haven’t made sales here, the imposter probably would be within its rights. Incredibly enough, the imposter could even block you from later making sales here under your mark. Because it made sales here first, its rights probably would be superior to yours.

There are two main solutions. First, if you have a foreign registration, you can leverage it into getting a U.S. registration. That would give you immediate rights in the States, even if you haven’t used the mark yet in the States. You just need a bona fide intent to use the mark here.

Second, you should start making sales to U.S. customers. That would give you automatic rights in the geographic markets in which you sell. Anyway, sales in the States are needed to maintain a U.S. registration that is based on a foreign registration.

In the end, without a U.S. presence, foreign owners should not expect that their foreign trademark rights will be given much leeway here.