When you hear “March Madness,” it can only mean one thing: the National Collegiate Athletic Association (“NCAA”) National Championship Tournament. From its humble beginnings to its widely-known usage today, the NCAA’s March Madness® trademark represents a valuable asset that the NCAA fiercely protects. In fact, over 85% of the NCAA’s yearly budget comes from the advertising and marketing of its three-week basketball tournament. As a result, the NCAA has a well-established reputation for protecting its “March Madness” trademarks. Since its first legal battle over use of the mark in 1995, the NCAA has adopted a full-court press strategy to defend its trademarks and preclude any unauthorized company or individual from using “March Madness” in connection with the game of basketball.
What Types of Uses are Generally Prohibited?
Every year, innovative entrepreneurs attempt to make gear for the rabid college basketball fans that are supporting their team in the tournament. Similarly, bars and restaurants want to make sure they bring in viewers and, in certain cases, offer early hours to accommodate early games. However, in almost every conceivable case, if an apparel maker, bar, restaurant or anyone else wants to use the March Madness® trademark to refer to the tournament, they must license it from the NCAA.
While many of us think of fake Gucci® wallets or elaborate forgery when we think of a “counterfeit,” counterfeiting, under U.S. law, can be much more innocuous. In fact, using the name March Madness® on apparel, such as a shirt, hat, or other product without permission could be considered a counterfeit under the law. The NCAA has a robust licensing program that allows only licensed users to use the phrase and, from the NCAA’s point of view, consumers would expect that any product bearing the March Madness® trademark would be authorized by the NCAA.
Bottom line: if you want to print apparel using the March Madness® trademark, you should seek a license from the NCAA or risk liability for trademark infringement and/or counterfeiting.
As mentioned above, bars and restaurants also seek to profit by advertising their specials and deals. If a bar or restaurant uses the March Madness® trademark in their advertising, then they too can be liable for trademark infringement. While it’s impossible for the NCAA to find every potential infringement, the NCAA frequently sends cease-and-desist letters to the owners of bars and restaurants who it discovers are making unlicensed-use of the trademark.
Similar Name for Similar Goods/Services
Trademark law is not limited to exact replications on identical services. Trademark law prohibits a third-party’s use of a confusingly similar trademark on related goods and services. The “stronger” the trademark (through both uniqueness of the name and how well-known the trademark is), the wider the scope of protection. In its most recent lawsuit, the NCAA sued to prevent game developer Kizzang from using any Madness-related trademarks in its 2017 basketball-themed games. The developer had initially attempted to register “Final 3” and “April Madness” in connection with its virtual basketball tournament, but without surprise, the NCAA was quick to oppose the registrations with the USPTO.
How far will the NCAA go to defend its rights? As far as necessary, even if it means filing suit against members of its same association. In February of this year, the NCAA filed a notice of opposition against the Big Ten Conference and its registration of the mark MARCH IS ON! in connection with the advertisement of athletic events. Although the opposition is currently on hold pending settlement negotiations, the NCAA’s history of aggressive protection over its mark gives little room to any possibility of the Big Ten Conference keeping the MARCH IS ON! mark.
Why is the NCAA So Aggressive?
An overview of the NCAA’s litigious nature begs the question: is such aggression necessary? Many will argue that as a matter of fairness, the NCAA is being too extreme, that bars, restaurants, and the like are not hurting but rather promoting the tournament, etc. It can seem like the NCAA is a bully, but, for the most part, the NCAA is acting like any other trademark owner would (and should) to protect its trademark.
Picture this: you go to a NCAA-licensed bar to watch the game. A big sign in front of the bar says “March Madness® Lives Here – Specials All Night Long.” The feed is crystal-clear. The bar had spent a significant amount of money on decorations and special giveaways for you to support your favorite team.
Now picture a run-down bar with a similar sign outside reading “March Madness in Here.” You walk in, and the bar is crusty, and the TV has poor reception due to the dubious wiring clearly visible from the front door. You and your friends have a terrible time.
When you think about your poor experience, there is, at least a chance, that someone would look at the use of March Madness and believe that, in some way, the NCAA sanctioned this bar’s use of the phrase. This is the type of harm that trademark law tries to prevent and, in part, why the NCAA is so litigious about its trademark.
It is also a tenant of trademark law that third-party use of similar trademarks can weaken the scope and overall strength of a trademark (i.e. how well the consumer associates the trademark with its true source, and not the third-party). The more third-parties use similar trademarks, the harder it becomes for the trademark owner to enforce its trademark, as consumers will have exposure to all of these third-parties. According to federal courts, a trademark owner must be diligent in protecting its rights.
The bottom line is that any business owner (or individual) who uses the March Madness trademark in an authorized manner should be prepared to face an organization that knows a lot about offense when it comes to trademark protection.