With the National Collegiate Athletic Association (NCAA) Basketball Tournament — commonly referred to as “March Madness” — in full swing, broadcasters, advertisers, and other businesses need to be cognizant that they don’t run afoul of trademark laws. While the NCA owns the federally registered trademarks, “March Madness,” “The Big Dance,” “Final Four,” “Women’s Final Four,” “March Mayhem,” and more than 70 others, businesses that use these marks must be aware of the potential for liability. Critically, the NCAA takes a strong stance when it comes to protecting its March Madness trademarks — and aggressively pursues claims regarding the unauthorized use of its registered marks.
The NCAA derives a significant amount of revenue from licensing “March Madness” and the related trademarks for use by advertisers. In connection with these licenses, the NCAA has agreed to stop parties that are not authorized from using the marks. Without pursuing action against parties who engage in unauthorized use of the mark, businesses would have no incentive to obtain a license or pay the fees associated with one.
According to the terms of the NCAA’s Trademark Protection Program, NCAA’s March Madness trademarks may not be used without permission in any direct or indirect context. This includes usage in connection with the NCAA’s championships, ticket sales, sweepstakes, promotions, contests, or as part of any internet domain name. Importantly, unless the use is authorized by the NCAA, the following activities can potentially result in a cease and desist letter:
These restrictions do not prevent media companies from using any of the NCAA’s marks to provide customary news coverage of the events as long as they are used to identify the tournament or its stages. Any commentary must not imply an association with the station or an advertiser who is not affiliated with the NCAA.
In addition to the “March Madness” tournaments comprising a large percentage of the NCAA’s revenue, there are several vital reasons the NCAA is so aggressive about safeguarding its March Madness trademarks — and other businesses should take note. While many might argue that businesses, broadcasters, bars, and other companies that use the marks in connection with advertising the event are promoting it rather than harming it, the NCAA is taking the type of enforcement actions every trademark owner should take in order to shield the integrity of their marks. If the mark is used in an unauthorized manner or in a way that dilutes the trademark, consumers may think the NCAA sanctioned the use, and the strength of the mark could be weakened.
Misusing the NCAA mark or using a similar mark could also confuse consumers concerning the mark’s actual source. All trademark owners must be attentive and meticulous when it comes to protecting the scope and strength of their trademark. Not only is a mark how consumers identify a company, but it is also vital to that company’s profit margin and bottom line.
The NCAA has brought several infringement actions over the years. In 2017, it filed a lawsuit against a fantasy sports sweepstakes company in Las Vegas that used the phrases “April Madness” and “Final 3” for events related to the NCAA Division I Men’s Basketball Championship. In this case, even though the marks were not the same as the NCAA’s registered trademarks, the court held that they were “obviously similar” and that use in connection with the NCAA basketball games constituted “willful infringement.” As a result, the company was permanently enjoined from using the phrases “Final 3,” “April Madness,” and other phrases that would be considered “confusingly similar” to the NCAA marks.
In another case, the NCAA commenced an action against a car dealership that had registered the mark “Markdown Madness” and was using it in its advertising. Other lawsuits include an action over use of the phrase “March Modness” for an online modeling contest, “Marsh Madness” for electronic cigarette refills, and for an online sweepstakes called “March Mulligans.” Notably, before any of these marks were published for opposition, USPTO examining attorneys had determined that there was no likelihood of confusion with any similar marks.
Protecting your trademark is crucial to the success and growth of your company. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC provides a variety of trademark services to business owners, startups, and entrepreneurs in many industries throughout the country. With an impressive track record of successfully registering more than 6,500 trademarks with the USPTO, we offer our clients high-quality legal services at reasonable rates. Contact us today to schedule a complimentary 15-minute consultation with a trademark attorney concerning your trademark matter.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.