This week is Super Bowl week here in Indianapolis. Fans, the media, and hordes of folks hoping to make a quick buck have invaded the city we  affectionately call  Naptown. But experiencing the Super Bowl as a live event  is only a small part of the Super Bowl. All around the United States merchants will be pounding the air waves and the Internet with special Super Bowl deals on everything from TVs to shag carpet.

So what, you say?  What's the big deal?

Well actually selling stuff using the term Super Bowl is a big deal. My colleague Ron Coleman, who writes the influential trademark blog  LIKELIHOOD OF CONFUSION, has taken a special interest in the NFL's efforts to control all use of the term SUPER BOWL. And indeed there have been several well publicized fiasco's involving the NFL and its "bullying" tactics involving the term Super Bowl.

One would assume that because of such over the top efforts  all use of the  term SUPER BOWL was tightly controlled  and traceable to  the NFL or its  licensees. That assumption would be false.

 A Google search for "super bowl 2012 tv deals" unearths hundreds of different chances to buy a new television. More generally, a Google search for "super bowl 2012 deals" returns thousands of opportunities to purchase stuff from thousands of merchants.

In the cloistered world of trademark law much ink is being spilled over what it means to be a trademark bully. Indeed, I am helping to spill some of that ink. Is the NFL a trademark bully when it tries to control use of the term SUPER BOWL? Many would say yes. But, based on my  brief and unscientific research, it appears that thousands of merchants are guilty of taunting the NFL by the way they are  using  the term SUPER BOWL without permission.



In a thoughtful and well reasoned decision, a magistrate judge in Oregon reminded trademark lawyers, and their clients, that careless legal practices can be very costly. The  magistrate judge also made it clear that displaying  arrogance and disdain for the court may not be be the smartest way to  advance one’s cause.
            The case W. Brand Bobosky and We Not Me Ltd. v. Adidas began in 2000. Mr. Bobosky, an attorney in Naperville, Illinois, created the phrase WE NOT ME. He began to use the phrase on promotional items. Four years later Mr.Bobosky  hired a law firm to prepare and file a federal trademark application for this phrase. The application was based on Mr. Bobosky’s “intent” to use  WE NOT ME  on a laundry list of men’s and women’s clothing items. This list was prepared by Mr. Bobosky’s  attorney, who also signed the application.
 When it was time to file  the necessary statement of use to secure the federal registration Mr. Bobosky, through his lawyer,  presented a hat as a specimen. Although Mr. Bobosky  could have deleted all the other goods  he did not. Instead he declared that he was using WE NOT ME on all the goods set forth on his laundry list. He later claimed that he did not understand his obligation to verify that the list was accurate. 
            Fast forward to 2007. Mr. Bobosky, through a new attorney, wrote to adidas complaining about their use of the phrase WE NOT ME. An in house  attorney for adidas challenged Mr. Bobosky’s  federal registration because he could not  find any evidence that Mr. Bobosky has been using WE NOT ME on clothing.
 And what was Mr. Bobosky’s reply? AFTER this challenge he cleaned up his registration and had his new attorney file  another  application to register WE NOT ME, with a more careful list of goods.  His  new attorney eventually filed a statement of use and they went after adidas again, claiming infringement of a federally registered trademark and unfair competition  under Section 43(a) of the Lanham Act. Adidas fought back hard, seeking to invalidate Mr. Bobosky’s registrations because he did not have the necessary bona fide intent and because he had not made any trademark use of WE NOT ME. 
            Based on Mr. Bobosky’s very weak testimony and other evidence of record, the magistrate judge invalidated his federally registered trademarks but allowed him to maintain his unfair competition claim.
            I hear you asking: OK Mr.Trademark Troll what makes this case  interesting? Two things.
            First, I would bet my usual ham sandwich that thousands of federal trademark applications  are handled exactly as this one was- with both the applicant and the attorney either ignorant of,  or indifferent to, the accuracy of the signed statements  that are part of the federal registration process. That’s an unsettling commentary on trademark attorney/client relations but not much more. Unless you build your trademark rights on such a flimsy foundation and then decide to get your lottery ticket punched by challenging a major consumer goods company.

Second, the magistrate judge went out of his way to chastise the adidas trademark counsel for displaying such a disdainful and disrespectful attitude. I can only imagine what it must be like to read comments such as:

adidas  provides no authority to support this position and I find it completely at odds with the leading cases that address this issue

when asked by the court….. adidias counsel responded somewhat disdainfully that he did not even understand the question

adidas continually rebuffed the court’s questions about the size and location of WE NOT ME… and whether those factors  suggested that the mark functioned as pure ornamentation or as a trademark. That, of course, is the critical inquiry

Would the unregistered trademark claim have survived summary judgement anyway? Probably. But this case is not the finest hour for the trademark bar. One can easily argue that it never should have been brought with  such a questionable prosecution history and such skimpy marketing efforts. And, by displaying such a poor attitude, a litigator may now put adidas in the position of writing a check to someone who doesn’t deserve it. Or continuing a battle with two opponents. One of whom is the judge.   


Labels: , , ,