(The following is an article written by David Oxenford of Wilkinson Barker Knauer LLP. The article originally appeared on Oxenford’s blog.)
It’s that time again when broadcasters and advertisers need to watch their commercials and promotions to avoid improper uses of trademarked phrases — with the Super Bowl only weeks away, the Winter Olympics to follow soon thereafter and March Madness to follow closely after that. As we do every year when the Super Bowl and March Madness roll around (and every other year at Olympics time), we remind broadcasters to scrutinize their advertising and promotions to avoid anything that appears to imply a tie in with any of these events — especially where the protected name of the event is used in the ad or promotion itself.
The Super Bowl and March Madness are both trademarked terms, and violations of the trademarks have been vigorously prosecuted by the NFL and the NCAA, respectively. The US Olympic committee has gone one better, getting specific statutory protections in the US for the use of the term the Olympics and the interlocking rings that symbolize the games. Sponsors of these events pay big bucks for the privilege of being associated with the events, and the organizations putting on the events rely on the money from these sponsors to fund their operations. So they go out of their way to protect their trademarks. I wrote the summer before last about my own experiences at the London Summer Olympics, where even the trademarks on the plumbing fixtures at the Olympic sites were obscured where the manufacturers had not obtained Olympics sponsorships. So there are obviously limits on what can and cannot be said about these marks. What are those limits?
First, it is the event name that is the biggest concern. So you’ll see promotions for big screen TV stores talking about buying your TV so that you can be ready for the “big game” or for “your winter sports viewing pleasure” or similar formulations that avoid the trademark. Implying that the advertiser (or your own broadcast station in connection with a promotional event) is somehow affiliated with the big event can raise problems. So stations should avoid these kinds of promotional uses of these phrases.
Every year, when we post these warnings, we get some skeptical comments suggesting that we are making more out of these concerns than legally warranted. Some have suggested that advertisers who say “buy a TV so that you can see the Super Bowl,” where the store makes clear that they are not affiliated with the game or the NFL, might be able to say ”Super Bowl” as it is just using a fact that the game is coming up and does not in any way imply that the station or advertiser is truly affiliated with the game, or that the NFL somehow endorses or is affiliated with the seller of the TV. While there may be ways to do that, how many stations or advertisers want to get into the business of parsing every ad to decide if the use of the phrase “Super Bowl” is permissible under trademark law or not, and how many want to have to go through the hassle of dealing with the NFL and their attorneys if they disagree with the station or advertiser’s assessment that a commercial use is permissible? That is why the “big game” formulation is so often used, as (unless you have an experienced trademark attorney on staff to review every ad) it is safest to simply avoid using “Super Bowl”, “March Madness” or “the Olympics” in your commercial announcements.
Does this stop your news people from reporting on the event, or your morning DJs from talking about who their favorite team is in the Super Bowl, or who they think should win the ice dancing event at the Olympics? No. These are newsworthy events that can be discussed on the air, just as your station can discuss the events that surround the new coach for your local NFL football franchise, or the road to the Olympics of the hometown luge participant. There is a First Amendment right to be able to report on and discuss these events. It is the commercial exploitation of the trademarked phrases that raises the issues.
