On February 3rd, the National Football League’s championship game – the “Superbowl” – will be played in New Orleans, Louisiana. The game, between the San Francisco 49ers and the Baltimore Ravens, will feature an unusual coaching matchup in that the head coaches of the two teams are brothers. Jim Harbaugh is the second year coach of the 49ers, while John Harbaugh, his older brother by one year, is the fifth year coach of the Ravens. The brother versus brother head coaching matchup, which has never occurred in NFL history, is the subject of much media coverage. Commentators have referred to the game by such monikers as the “Harbowl” and the “Superbaugh.”
As reported by ESPN.com, Roy Fox, an individual in Indiana, had the foresight last year to anticipate that such a coaching matchup might occur in the near future. He filed two intent-to-use trademark applications to register the terms “HARBOWL” and “HARBAUGH BOWL” for clothing. His inspiration was reportedly Pat Riley, former coach of the Los Angeles Lakers of the National Basketball Association, who once registered the trademark “THREE PEAT” before his team won a third consecutive NBA championship. The NFL, apparently not appreciative of Mr. Fox’s foresight, sent him a cease and desist letter demanding that he abandon his trademark applications. Mr. Fox apparently offered to comply in exchange for reimbursement of the cost of his applications, season tickets for his favorite team and an autographed photo of NFL Commissioner Roger Goodell. According to Mr. Fox, the NFL declined and ultimately threatened to file a Trademark Opposition against his applications and to seek attorneys’ fees. Faced with this threat, Mr. Fox abandoned his applications.
Stated bluntly, the NFL should be penalized for unsportsmanlike conduct. Evidently realizing that it lacked legal authority to stop Mr. Fox, the NFL, with revenues in the billions of dollars annually, relied on its power of coercion to “tackle” him. First, Mr. Fox’s ingenious “HARBOWL” mark is substantially different than the NFL’s “SUPERBOWL” mark. Indeed, the NFL would likely be unable to establish exclusive rights to the sole element shared by the two marks, namely, the term “BOWL”. There are scores of college football “bowl” games played each year, including The Rose Bowl, The Orange Bowl, etc. Second, inasmuch as Mr. Fox merely filed intent-to-use applications, it is unclear exactly how he intended to use the trademarks. The NFL obviously had no evidence to argue that Mr. Fox would use his proposed “HARBOWL” mark in a manner to confuse consumers. Mr. Fox may well have intended to use his proposed “HARBOWL” mark in a manner to comment upon the status of professional football, or in connection with some other legally recognized and permissible form of free speech. Under such circumstances, the NFL would have been hard pressed to prove that consumers would be confused, as is typically required to prevail in a Trademark Opposition. The only action by Mr. Fox that likely would have drawn a flag and been thwarted was his attempt to register the trademark “HARBAUGH BOWL”, inasmuch as he presumably has not been authorized by either of the coaching brothers to use the surname.
The determining factor in this dispute was apparently the NFL’s threat to seek attorneys’ fees if it was forced to file a Trademark Opposition. Had Mr. Fox consulted an experienced trademark attorney, he would have learned that the Trademark Trial and Appeal Board, which is the arbiter of Trademark Opposition proceedings, has absolutely no power to award monetary damages of any kind, including attorneys’ fees.
The ESPN report concluded with the suggestion that Mr. Fox will be able to continue to use the trademarks on clothing, but will simply be unable to profit from them (whether by licensing them or by prosecuting third parties for infringement of his rights). This, however, is most certainly not the case. If a party has legitimate trademark rights, the party may both use the trademark and license/prevent others from using it. The only thing that is clear, although unfair for the reasons stated, is that should Mr. Fox begin to use the trademarks in the future, he most assuredly will be hearing from the NFL once again.
