Prior to the Eagles’ big win over the favored Pats this year, NFL Properties LLC, along with the New England Patriots LLC and Philadelphia Eagles LLC, filed a lawsuit against Does 1-100, “large-scale, professional counterfeiters,” to try to stop both the production and sale of unlicensed Super Bowl merchandise.
Per a Forbes report, the lawsuit was filed in Minneapolis, the site of Super Bowl LII. The NFL engages in this legal practice regularly prior to the Super Bowl in order to protect its trademarks and prevent the production and sale of counterfeit goods. For example, the NFL wants to prevent the phrase “Super Bowl” from being used in promotions for game-watching parties.
The NFL asked the court not only for restraining orders against the counterfeiters to stop production, but also an ex parte temporary restraining order to enable law enforcement to seize counterfeit goods. The complaint alleges that counterfeiting not only harms consumer but also brand owners.
Per Forbes, defending one’s mark is an important part of being a trademark owner.
“Besides the potential weakening and loss of distinctiveness (“dilution” in trademark speak), the failure to enforce a trademark could even lead to the forfeiture of some of the available remedies for infringement.”
In order to determine whether trademark infringement did occur, the courts will use the “likelihood of confusion” test. This is the reason, says Forbes, that “multimillion-dollar companies hire professional watch services to monitor trademark use and possible infringement.”
In its report, Forbes considers a very interesting question:
“Counterfeit items, the target of the most recent lawsuit, are a legitimate business concern, but is the NFL out of bounds in restricting the usage of its terms, logos and images surrounding the Super Bowl?”
Forbes considers whether some of the NFL cases protecting its intellectual property would hold up in court. It’s unlikely, for example, that one would think that the NFL had endorsed an ad (with or without team logos) for a Super Bowl party at “Wally’s Watering Hole in Podunk, PA.”
But the only way to challenge how far the NFL’s trademark can reach would be for a business owner to take it up in court, and that is highly unlikely given the NFL’s resources. As Forbes concludes, the business owner would be “an eleventy-billion-point underdog.”