This past Saturday, Kirk “YOU LIKE THAT” Cousins helped the Washington Redskins clinch the NFC East by beating the Philadelphia Eagles 38-24 in the latest edition of NFL’s “Thursday Night Football.” While some may have been too enthralled by what was happening on the field to even notice, others may have been constantly distracted by the inner monologue repeating itself in their head: “Why does the NFL call it ‘Thursday Night Football’ when the game is being played on Saturday?” “Does the NFL think we’re not paying attention?” “Is the NFL not paying attention?”
Unbeknownst to many, the NFL has a perfectly good reason for promoting games under the “TNF” brand notwithstanding the fact they occasionally do not fall on that day of the week.
A Little History
The NFL applied for the trademark “Thursday Night Football” on May 20, 2013. On April 22, 2014, the United States Patent and Trademark Office (USPTO) registered the mark, thereby granting the NFL the exclusive right to use “Thursday Night Football” for, among other things, the following services: “Entertainment services in the nature of professional football games and exhibitions.”
[pullquote align=”right” cite=”” link=”” color=”” class=”” size=””] Only ESPN may advertise games using the “Saturday Night Football” moniker. [/pullquote]
The NFL’s “Thursday Night Football” programming began on November 23, 2006 and consisted of a total of eight games – five on Thursday and three on Saturday. The NFL originally billed each game “Thursday Night Football” or “Saturday Night Football” depending on the night of the game; however, this practice was dropped before the beginning of the 2009 NFL Season.
Currently, all NFL games played on Saturday are presented as “Thursday Night Football Saturday Edition.” The reason for what many may consider a nonsensical change is most likely due to the fact that on September 11, 2007, the largest entertainment and sports news broadcasting company in the world – ESPN – received registration for the trademark “Saturday Night Football” after applying for same on July 25, 2006.
Notably, ESPN applied for the trademark for services nearly identical to those subsequently applied for by NFL: “Entertainment services in the nature of a televised series of football games.” As a result, just as with the NFL and “Thursday Night Football,” only ESPN may advertise games using the “Saturday Night Football” moniker.
NFL vs. ESPN: Unlikely Foes
As of mid-September 2007, no one can use “Saturday Night Football” in conjunction with the advertising and promoting of football games – whether college or professional – without ESPN’s express permission. The possible reasons for the leagues’ change may include one or a combination of the following: (1) the NFL wished to avoid a potential dispute with ESPN regarding use of the phrase; (2) the NFL wasn’t willing to pay what ESPN was offering to license or assign the phrase; (3) ESPN may have simply not offered the trademark for use; and/or (4) the NFL may not have wanted to disturb their lucrative business relationship with ESPN (including a $15 Billion Monday Night Football contract).
Nonetheless, applying for its own “Saturday Night Football” trademark is not an option. The USPTO rejects applications for potential trademarks based upon a number of grounds, such as if the applied-for mark includes scandalous or offensive language, or the name, portrait, or signature of a person without his or her consent. However, the most common reason referred to by the USPTO for rejecting an application is that the mark is likely to lead to confusion in the marketplace with regard to a trademark that has already been registered or applied for with the USPTO.
The USPTO determines whether or not a trademark should receive registration according to thirteen factors – generally referred to as the DuPont factors – named after the case that originally established the elements to be considered. While all thirteen factors are applied when applicable, the most common reasons for refusal is that the applied-for mark is substantially similar in name or appearance and is for goods and/or services substantially similar in nature to those already offered by a registered trademark or pending application.
Furthermore, federal trademark law – specifically, the Lanham (Trademark) Act – gives registered trademark owners the right to sue any person or entity in federal court who uses any reproduction, copy, or colorable imitation of a registered mark in connection with the sale or advertising of any goods and/or services in interstate commerce if such use is “likely to cause confusion, or to cause mistake, or to deceive” any member of the consuming public.
[pullquote align=”left” cite=”” link=”” color=”” class=”” size=””] Any attempt by NFL to register its own version of “Saturday Night Football” – whether in that exact form or a form similar to it – would surely be denied by the USPTO. [/pullquote]
Therefore, any attempt by NFL to register its own version of “Saturday Night Football” – whether in that exact form or a form similar to it – would surely be denied by the USPTO.
Additionally, were the NFL to broadcast games using “Saturday Night Football” without ESPN’s okay, the act would open up the door for an expensive trademark infringement lawsuit that the NFL would find rather difficult to defend. Typically, whenever a junior applicant wishes to use a registered trademark owned by another, the two will enter into a licensing agreement granting consent for a variety of approved usages. Alternatively, if the owner no longer uses the mark, or has plans to discontinue use in the future, the owner may assign the mark, effectively making the junior user the exclusive owner. However, these two options usually come with a price tag, and one could only image how much ESPN may have asked if either opportunities were made available to the NFL.
Based upon the foregoing, it appears the NFL continues to market games as “Thursday Night Football” even when showed on Saturday for the following reason: the league made a conscious business decision that it would be too costly to keep using “Saturday Night Football” as it originally intended after ESPN trademarked the phrase. Not only do trademark infringement lawsuits invite large attorney fees, but in the event NFL was deemed to be a willful infringer based on prior knowledge of ESPN’s exclusive right to use “Saturday Night Football,” not only would ESPN be entitled to damages and all costs incurred in the lawsuit, but the network would be able to receive all profits earned from the transmission of games bearing the mark. That would be one large bill to pay just to inform viewers the game is being shown on a different day.
Noticeably, the NFL used “Saturday Night Football” for two seasons after ESPN received registration, then completely discontinued scheduling games on the NFL Network on Saturdays until 2014. It could be because ESPN and the NFL were trying to structure a deal that would allow the league to continue using the phrase, which never came to fruition.
Another possibility is that ESPN was advised by an intellectual property attorney of the power of branding and how important it is to protect one’s trademark rights, which led to the issuance of a letter demanding that the NFL cease and desist from using “Saturday Night Football” to advertise games. In any event, based on the fact that the NFL waited SEVEN YEARS to trademark “Thursday Night Football,” it follows that ESPN’s prior act served as a motivating factor for the league to do the same.
So, for now and the foreseeable future, we are stuck with the confusing TNF branding for Saturday night NFL games.