We get that question about 3-4 times per week here on Avvo in one form or another. At SuperBowl, BCS National Championship, March Madness, World Series, etc.) time we get some variation of this question about 10 times per day. Can I use in commerce the logo but no name? Can I use the name but no logo? Can I use the colors and slogan? Can I use a player's image or name? Is there some other way I can steal business from a major sports league and get rich quick without them doing anything about it?
NO, NO, NO. You can't, You shouldn't. Don't do it!!
Tip #1: This is BIG business. The big source of revenue for the NFL and other big leagues is the licensed merchandise, even bigger than ticket sales. They do not want to share that revenue. They want big companies paying them millions to use those logos, often granting exclusive positions to such companies in return for huge piles of money. Part of the reason big companies pay them is that the NFL does not let people steal their logos, the NFL sues people that try that, and that would include suing you if you try this.
Tip#2: The NFL is watching. [So is the NBA, NHL, MLB, and NCAA.] At most NFL events there are NFL investigators lurking around trying to catch offenders selling fake NFL merchandise. The NFL often goes to the local court and gets what Is called an "Ex Parte Seizure" order from the court authorizing the police to confiscate any suspected counterfeit goods discovered in or around the site of the event. So if you go near an NFL stadium on game day and try to sell fake NFL merchandise, you are likely to get a visit from the police, who will confiscate everything you have as "evidence" of your infringement. If you try selling the stuff on eBay, guess who will be watching. An NFL investigator may be your first customer, buying evidence to use to bankrupt you.
Tip #3: You can get penalized. It's a major infraction. This is serious business and the consequences are severe. If it's counterfeits you want to sell, read 18 USC 2320 and see how you would spend your 10 years in jail and think where you would come up with $2,000,000 in fines. You can get thrown out of the game (lose your business). You can get a major civil penalty (for copyright, up to $150,000 per item.) In most states you can go to jail without passing GO. This is taken as a form of theft. It violates trademark laws and often also copyright laws. It may constitute fraud and is often subject to criminal penalties. Tip#4: NFL Licensees, Like NFL Team Owners, Are An Exclusive Club. The NFL has enormous minimums that they require in order to license somebody on their merchandise. You would if you were them. They don't need to work for chump change, they can command millions. The reason is that the NFL does not want to have to police 10,000 licensees, but would rather only police a few hundred big time companies with lots of money to pay to the NFL. If the decision is between licensing you and licensing Nike on the same product, it is a no-brainer for the NFL, Nike gets the license and you don't. If you don't like that and try to make your product anyway without a license, you are likely to either pay a huge fine, end up in jail, or both. If you want to produces onesies or twosies, you need to be talking to an NFL licensee or sublicensee, not the NFL. Maybe the licensee will deal in such small numbers, but you can be sure the NFL won't give onesies or twosies the time of day as they can get millions of dollars for the same effort with a big hitter like Nike, Champion, Adidas, LA Gear, etc. The NFL usually wants to license the top companies in any category and often won't seriously consider anyone else. Everyone wants an NFL license, so the NFL can pick and choose the best licensees with no problem and will usually get the deal with the top company. I mean, really, if you are a marketing manager for AB InBev responsible for advertising BUD and BUD LIGHT, you better get that great SuperBowl ad or you better start sprucing up your resume.
Tip #5: If You Are An Individual, An NFL License Won't Happen! Here is another tip, the NFL licensing people don't want to deal with individuals, they want to deal with experienced attorneys who understand licenses and who speak the jargon of licensing and who will see that their clients follow NFL rules. If you were the NFL wouldn't you want to deal only with a very few honest licensees to make your job infinitely easier and make much more money? Wouldn't you want to just deal with about 100 major licensees rather than 100,000 individuals? Of course you woud, and they do. To deal with the pros you need to be and act like a pro. So, if you want an NFL license hire a professional so you look professional. Otherwise, you look like an amateur (and ARE an amateur) and the NFL is professional sports not amateur sports and they deal with professionals not amateurs. Got it? If not, you won't get it (a license, that is). NFL licenses are the biggest and best of the big time licenses. Go pro or don't go at all.
Tip #6: My customers ordered it, not me is not an excuse. Can I commit a murder if someone ordered it? Can I steal your car if someone ordered it? Can I rob a bank if someone ordered it? "Can I steal an NFL [or NBA or NHL or NCAA, etc.] trademark if someone ordered it" is not much different! It doesn't matter if a customer ordered it --that's not a defense to the likely trademark infringement claim. They don't want you competing with them, even just a little. A bunch of "littles" add up to real money. And they have their licensees to protect and their trademark to protect. And it is entirely up to them, not your customer, because they, not your customer, own exclusive rights to their trademark used in conjunction with their goods and services and any that are the natural expansion of those goods and services. Don't take your customer's word, make them prove they are licensed. Check with the NFL itself if in doubt.
Tip #7: Names and Numbers are also protected. So, you want to sell a decal with RAY LEWIS 52 or MICHAEL JORDAN 23 or STAN THE MAN 6 etc? That violates the celebrities right of publicity and perhaps trademark rights or servicemark rights. The only reason for doing something like that would be to free-ride on the hard earned reputation of a sports legend, and Courts see that as a form of theft and a number of states have laws against it. Try this an Michael Jordan's lawyers will slam dunk you.
Tip#8: Private Non-Commercial Person Single Use is Legal
One of the facts necessary to establish trademark infringement under the Trademark Act is use "in commerce" or "intent to use in commerce". That does not require selling, distribution is enough, or even possession of an inventory for sale but not yet sold. In fact, the law provides for unannounced raids to seize counterfeits, these being called "ex parte seizures", pursuant to court order - much like the process of getting a search warrant to seize drugs or counterfeit money. See 15 USC 1114.
text/15/9: General Guidelines
Here are some guidelines. 1: If it is close enough to divert customers from buying officially licensed merchandise, it is likely too close. 2. If it uses the logo it is too close. 3. If it uses the full team name it is too close, even if the mascot alone would not be. (e.g. LSU Tigers, Missouri Tigers, Auburn Tigers, Louisville Cardinals, Montreal Canadians, St. Louis Cardinals, Arizona Cardinals). 4. If the mascot & team colors are used, too close. 5. If the institution & colors are used, it's too close. [e.g. TEXAS in burnt orange] 6. If it's close enough someone would buy it instead of licensed items, it's too close. 7. If you have to ask if it is legal, it likely isn't. 8. If you are going to sell it at game time in a game town to game attendees you will likely lose YOUR game. 9. If you intend to do enough that people think of the team, you likely did too much. 10. You are not the first to think of doing whatever you're thinking of doing. 11. You can do almost anything with your own single item for your own personal use except sell it. 12. If you do it online, around the stadium, at a publicized team event, or in large quantities you are more likely to get caught and the penalties, fines or jail time will be bigger. In short if you are trying to get customers to buy your stuff as team souvenirs, you are asking for trouble, unless your stuff is officially licensed.
Intellectual Property Law Attorney