By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP via the Broadcast Law Blog
This article is compiled from a 2-part series appearing in the blog.
My 2020 annual update on the use of trademarks associated with the NCAA Basketball Tournament was published on the same day that the NCAA announced it was cancelling the tournament due to the pandemic. Fortunately for all concerned (the players, fans, the NCAA and the broadcasters), it appears that the tournament will proceed as scheduled, with the first men’s games beginning on March 18 and the first women’s games beginning on March 21. Accordingly, this discussion should hold greater interest than it did last year.
So, with the tournament about to begin, 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®.
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, such as March Madness Live, March Madness Music Festival and Final Four Fan Fest.
Interestingly, the NCAA has filed applications for marks for contingencies relating to the pandemic. It has pending applications to register the marks MASK MADNESS and BATTLE IN THE BUBBLE. Although there has not yet been any use of these marks, if they are ultimately registered, the NCAA will have priority over anyone using those marks after the filing dates of the applications. In other words, although the NCAA currently does not have any rights in these marks, anyone who chooses to use either mark runs a significant risk of liability down the line.
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.
The NCAA Aggressively Pursues Unauthorized Use of its Trademarks
The NCAA stated that, in 2019, $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 brought in almost $178 M in ticket sales. Moreover, its returns from the tournament have historically grown each year. In 2020, due to the cancellation of the tournament, the revenues were substantially lower, but the NCAA had an event cancellation policy covering up to $270 M.
Although most of the Men’s Basketball Tournament-related 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. The NCAA’s statement regarding its Trademark Protection Program can be viewed here.
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.
Activities that May Result in a Demand Letter from the NCAA
The NCAA acknowledges that media entities can sell advertising that accompanies the entity’s coverage of the NCAA championships. However, similar to my discussion earlier this year on the use of Super Bowl trademarks (see here) and my 2018 discussion on the use of Olympics trademarks (see here), unless authorized by the NCAA, any of the following activities may result in a cease and desist demand:
- accepting advertising that refers to the NCAA, the NCAA Basketball Tournament, March Madness, The Big Dance, Final Four, Elite Eight or any other NCAA trademark or logo (The NCAA has posted a list of its trademarks here.)
- Example: An ad from a retailer with the headline, “Buy A New Big Screen TV in Time to Watch March Madness.”
- local programming that uses any NCAA trademark as part of its name
- Example: A locally produced program previewing the tournament called “The Big Dance: Pick a Winning Bracket.”
- selling the right to sponsor the overall coverage by a broadcaster, website or print publication of the tournament
- Example: During the sports segment of the local news, introducing the section of the report on tournament developments as “March Madness, brought to you by [name of advertiser].”
- sweepstakes or giveaways that include any NCAA trademark in its name (see here)
- Example: “The Final Four Giveaway.”
- sweepstakes or giveaways that offer tickets to a tournament game as a prize
- Example: even if the sweepstakes name is not a problem, offering game tickets as a prize will raise an objection by the NCAA.
- events or parties that use any NCAA trademark to attract guests
- Example: a radio station sponsors a happy hour where fans can watch a tournament game, with any NCAA marks and prominently placed on signage.
- advertising that wishes or congratulates a team, or its coach or players, on success in the tournament
- Example: “[Advertiser name] wishes [Name of Coach] and the 2020 [Name of Team] success in the NCAA tournament!”
There is one more common pitfall that is unique to the NCAA Basketball: tournament brackets used in office pools where participants predict the winners of each game in advance of the tournament. The NCAA’s position (see here) is that the unauthorized placement of advertising within an NCAA bracket or corporate sponsorship of a tournament bracket is misleading and constitutes an infringement of its intellectual property rights. Accordingly, it says that any advertising should be outside of the bracket space and should clearly indicate that the advertiser or its goods or services are not sponsored by, approved by or otherwise associated with the NCAA or its championship tournament.
It should be noted that the NCAA also imposes strict rules about the authorized uses of its trademarks. The NCAA’s Advertising and Promotional Guidelines for authorized use of its marks are posted online (see here and here).
Again, importantly, none of these restrictions prevents media companies from using any of the marks in providing customary news coverage of or commentary on the tournament. Just be sure that they are just used to identify the tournament and its stages, and don’t in any way imply that there is an association between the station itself or any sponsor or advertiser who does not have the rights to claim such association and the NCAA.
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 Final Score
Having invested so much in its trademarks, the NCAA takes policing its trademark rights very seriously. Even so, although the NCAA may call “foul!” and send a cease-and-desist letter over the types of activities discussed above, some claims may not be a slam-dunk as there can be arguments to be made on both sides of these issues.
If you are deciding whether or not to pass on accepting advertising incorporating an NCAA trademark or logo or using an NCAA trademark or logo other than in the context of reporting on the tournament, or if you are not certain whether the NCAA (or anyone else) owns a particular word or phrase as a trademark, you should seek an assist. An experienced trademark attorney can help you make an informed decision about whether you can successfully post a defense against any such charge and assess possible risks.