Although there is often significant overlap between the USPTO and the intellectual property offices of other countries, a recent UK Intellectual Property Office (IPO) decision highlights the geographic effects and protections afforded trademarks. The UK IPO granted in part and rejected in part a trademark which included the term “SUPERBOWL” in a stylized design. The National Football League (NFL), a US-based sports organization for American Football, has used the term “Super Bowl” to identify its championship game, played in the US and broadcast worldwide. Although the NFL does hold an EU trademark registration for “SUPERBOWL” in classes 16, 25, 28, and 41, the IPO made it clear that the NFL’s popularity and fame in Europe are inferior to that of in the US. The new trademark application was refused in class 41 due to the overlapping class for “entertainment” services; however, it was granted in class 43 for services providing food, drink, and temporary accommodation.
The IPO determined that the NFL had not made a strong enough showing that there was evidence of trade relation between its mark and class 43. If the NFL’s mark had achieved the same fame in Europe that it has in the US, the result would have likely been an outright refusal of the application. Famous trademarks in the US are often afforded protections greater than those literally listed in their trademark registrations due to the widespread recognition regardless of context or audience, and can, therefore, be used to prevent the registration of marks in unlisted classes of goods and services.
Source – WIPR