With the NCAA Basketball Tournament about to begin (though without an audience at the games), broadcasters, publishers and other businesses need to be wary about potential claims arising from their use of terms and logos associated with the tournament, including the well-known marks March Madness®, The Big Dance®, Final Four®, Women’s Final Four®, Elite Eight,® and The Road to the Final Four® (with and without the word “The”), each of which is a federally registered trademark. The NCAA does not own “Sweet Sixteen – someone else does – but it does have federal registrations for NCAA Sweet Sixteen® and NCAA Sweet 16®.
The NCAA also has federal registrations for some lesser known marks, including March Mayhem®, March Is On®, Midnight Madness®, Selection Sunday®, 68 Teams, One Dream®, And Then There Were Four®, and NCAA Fast Break®. The NCAA has a pending application to register March to the Madness as well.
Some of these marks are used to promote the basketball tournament or the coverage of the tournament, while others are used on merchandise, such as t-shirts. The NCAA also uses (or licenses) variations on these marks without seeking registration, but it can claim common law rights in those marks, e.g., March Madness Live, March Madness Music Festival and Final Four Fan Fest.
Although the NCAA may use the federal registration symbol (®) with any of its federally registered marks, it is not obligated to do so. Thus, it should not be assumed that the lack of the symbol means that the NCAA is not claiming trademark rights.
A Surprising History of “March Madness” (For Those Who May Like Sports Trivia)
The NCAA also may not have been the first to license the use of “March Madness.” Beginning in the early 1990’s, the IHSA licensed it for use by other state high school basketball tournaments and by corporations.
Moreover, the NCAA did not originate the use of “March Madness” to promote its collegiate basketball tournament. Rather, CBS broadcaster is credited with first using “March Madness” in 1982 to describe the tournament. As CBS was licensed by the NCAA to air the tournament, the NCAA apparently claims that as its date of first use.
Finally, the NCAA was not the first to register “March Madness” as a trademark. That honor went to a company called Intersport, Inc., which used the mark for sports programs it produced and registered the mark in 1989.
So, how did the NCAA get to claim ownership of the March Madness® trademark? The short answer is through litigation and negotiations over a period of many years. Although it has also been able to obtain federal registrations for Final Four® and Elite Eight,® it was late to the gate and was unable to snag “Sweet Sixteen” or “Sweet 16,” which are registered to the Kentucky High School Athletic Association (KHSAA). (The NCAA, however, has the KHSAA’s consent to register “NCAA Sweet Sixteen” and “NCAA Sweet 16.”)
The NCAA Aggressively Pursues Unauthorized Use of its Trademarks
Because it took the NCAA so long to assemble its trademark rights, it vigorously defends them. The NCAA states that $867.5 M of its annual revenue comes from the licensing of television and marketing rights in the Division I Men’s Basketball Tournament. In addition, it brings in almost $178 M in ticket sales. Moreover, its returns from the tournament have historically grown each year. Although most of this income comes from broadcast licensing fees, it also has a substantial amount of revenue from licensing March Madness® and its other marks for use by advertisers. As part of those licenses, the NCAA agrees to stop non-authorized parties from using any of the marks. Indeed, if the NCAA did not actively police the use of its marks by unauthorized companies, advertisers might not feel the need to get a license or, at least, to pay as much as they do for the license. Thus, the NCAA has a strong incentive to put on a full court press to prevent non-licensees from associating their goods and services with the NCAA tournament through unauthorized use of its trademarks.
Accordingly, the NCAA is very serious about taking action against anyone who may try to trade off the goodwill in its marks — even if the NCAA’s actual marks are not used. For example:
- The NCAA filed a trademark infringement action in 2017 against a company that ran online sports-themed promotions and sweepstakes under the marks “April Madness” and “Final 3.” The defendant stipulated to an order providing that it would cease using those marks at least until the end of the year, but the order did not provide for dismissal of the case. The defendant failed to file an answer to the complaint and the NCAA was granted a default judgment, after which it filed a motion requesting an award of attorneys’ fees against the defendant in the amount of $242,213.55. In May 2018, the Court found the infringement to be willful and awarded attorneys’ fees in the amount of $220,998.05.
- The NCAA sued a car dealership that had registered and was using the mark “Markdown Madness” in advertising. (The case was settled.)
- Even schools that are part of the NCAA are not immune from claims of infringement. Seven years after the Big Ten Conference started using the mark “March Is On!,” the NCAA opposed an application to have that mark federally registered. (Ultimately, the opposition was withdrawn, the mark was registered, but the registration was assigned to the NCAA.)
- Just in the last twelve months, the NCAA has filed oppositions to applications to register the following marks: MARCH MODNESS (online modeling contests); MOWER MADNESS (podcasts about outdoor power equipment); MIDDLE SCHOOL MADNESS (basketball camps), SPRING MADNESS (soccer tournaments), MARSH MADNESS (for electronic cigarette refills), MOTOR CITY MADNESS (athletic contests, providing sports information via the Internet and clothing) and MARCH MULLIGANS (online electronic sweepstakes and contests). (It should be noted that, before these marks were published for opposition, Trademark Attorneys at the PTO concluded that each of these marks was not confusingly similar to any registered marks.)
These actions illustrate the level of importance that the NCAA places on acting against the use or registration of trademarks which it views as being likely to create an association with its annual Collegiate Basketball Tournament. Clearly, such activities carry great risks
Tomorrow, we’ll provide some specific examples of actions built around the tournament that could attract the unwanted attention of the NCAA. Check back for those examples.