Updated February 19, 2018
Following the first Super Bowl® win by the Philadelphia Eagles, seven (7) different applicants filed trademark applications for “PHILLY SPECIAL”, a reference to a trick play called by the Eagles during the game.
As in other cases where trademarks are filed after a big news event, the chances of these applications maturing into registrations is slim. There are two main legal reasons for this cold dose of reality:
- Failure to Function: The phrase became so well-known through media accounts of the game that consumers would not recognize the phrase as being owned by one particular company.
- False Association: The use of the phrase by a non-affiliated NFL company could create a false association between the company, the NFL and/or the Philadelphia Eagles.
The applicants who have filed for ‘PHILLY SPECIAL’ range from individuals filing without the assistance of an attorney to Yuengling & Son (a well known beer maker from the Philadelphia area). A majority of the applications filed seek to reserve rights in the use of the mark in connection with various forms of clothing, however, one applicant seeks to use the mark, “THE PHILLY SPECIAL,” for sandwiches. Unsurprisingly, Yuengling seeks to use the mark in connection with a brand of beer.
One of the primary reasons that sports-related marks do not obtain approval from the United States Patent and Trademark Office (the USPTO) is the potential that the mark will give consumers the false impression that the mark or impending brand is associated with the referenced team. For example, an application for the mark “OFFICIAL MEMBER OF THE WHO DAT NATION” (Ser. No. 77942786) was abandoned following an office action refusal which, in part, cited a potential false affiliation with the New Orleans Saints. Likewise, Applicants unaffiliated with the Oakland Raiders have suffered similar fates, when applications for “RAIDER NATION BLACK HOLE CITIZENS” (Ser. No. 87222477) and “LAS VEGAS RAIDER NATION” (Ser. No. 87402018) were also initially refused registration by the USPTO, citing a likelihood of confusion and false connection to the football team, among other reasons, in the office action.
Alternatively, the mark “NO DAYS OFF” (Ser. Nos. 87326969, 87073112) referring to New England Patriot’s coach Bill Belichick’s chant during last year’s Super Bowl® parade, was approved for registration. The applicant? You guessed it- New England Patriots LLC.
Another issue is whether the name of a famous football play can even function as a trademark. A trademark is meant to represent a single source of a product or service – if consumers see ‘Philly Special’ on a t-shirt or even as the name of a beer, would they ever think of a specific company (even the Eagles organization?) Or would is simply represent that specific play in that specific football game? If its the latter, than it may be impossible to protect the trademark for specific goods and services.
Despite the above, there could be a number of legitimate uses of “PHILLY SPECIAL,” permissible for trademark purposes, so long as the phrase had a meaning unrelated to the Philadelphia Eagles and its famed football play. However, with that in mind, it’s likely that the only successful applicant for “PHILLY SPECIAL,” as it relates to football would be the Philadelphia Eagles themselves or the NFL (neither of which have applied for the mark as of the writing of this post).
At the end of the day, it is very likely that each applicant has wasted the $350 filing fee in their attempt to cash in on the popularity of the phrase… $1925 in total.