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.
Avoiding Activities that May Lead to a Cease and Desist from the NCAA
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:
Accepting advertising that makes reference to the NCAA, March Madness, The Final Four, or any other NCAA trademarked logo or slogan
Hosting contests or giveaways that include any NCAA name or trademark or offer tickets to a tournament game as a prize
Events that use any NCAA trademark on signage in an effort to attract guests
Advertising that congratulates a team or player using the NCAA name or another one of its March Madness trademarks
Selling the right to sponsor coverage of an NCAA tournament
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.
Why is the NCAA So Aggressive About Protecting Their Trademarks?
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.
NCAA Infringement Actions
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.
Questions About March Madness Trademarks? Contact an Experienced Trademark Attorney
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.
Frequently Asked Questions Related To Conducting A Trademark Search Before Filing
Before starting the trademark registration process, it helps to understand what a trademark search includes and how it can protect our brand. A proper search lets us see if anyone else is already using a similar name, logo, or phrase. It’s one of the first steps in the process because it helps avoid disputes, legal setbacks, and wasted time or money. Taking this step seriously can help us build something that stands on solid ground. A trademark lawyer can help us move forward with clarity and avoid unnecessary risk.
What Is A Trademark Search And Why Should I Do One Before Filing?
A trademark search with assistance from our intellectual property attorney helps us check if a name or logo is already in use or registered. The goal is to find any existing trademarks that are the same or confusingly similar to what we want to register. Doing this before we file a trademark application can help us avoid rejection from the USPTO or potential legal action from others who already own the rights to that mark. It’s also a good way to get peace of mind before investing in branding or product development.
How Do I Know If A Trademark Is Already Taken?
We can start by checking the USPTO’s Trademark Electronic Search System (TESS), which lists active and inactive federal trademarks. If a mark similar to ours is already listed, especially in a related industry or product category, that’s a sign we may have an issue. A basic internet search and a check of business name databases can also help us spot conflicts. But it’s important to remember that just because a name isn’t showing up doesn’t always mean it’s safe to use.
Can I File A Trademark Without Doing A Search First?
Our intellectual property lawyer will share that yes, we technically can file without doing a search, but it’s not something we recommend. Filing without checking for conflicts first increases the chances of rejection. Worse, we might start using a mark that someone else already owns, which could lead to a lawsuit or force us to rebrand. Doing a search, with help from our trademark lawyer is a simple way to lower the risk of those outcomes. It also gives us more confidence when promoting our business.
What Tools Can I Use To Search For Existing Trademarks?
The USPTO’s TESS database is the main resource we can use to search for trademarks in the United States. There are also third-party tools online that claim to offer search services, but not all of them are accurate or up to date. If we're looking for a broader or more detailed search, a comprehensive service that checks state databases, common law marks, and even international trademarks might be worth using.
How Long Does It Take To Do A Proper Trademark Search?
It depends on how deep we want to go. A basic search using the USPTO database can be done in a few hours if we know what to look for. A more thorough search that includes different jurisdictions and variations of the mark might take a few days. If we’re working with a professional, they may need extra time to prepare a report or advise on potential conflicts.
Making Smart Choices At The Start Of The Trademark Process
Before choosing a brand name or logo, it’s a smart move to pause and review what’s already out there. A careful trademark search helps us avoid issues and make informed decisions early. If we’re unsure about how to interpret the results or need help taking the next step, it’s always helpful to speak with someone who understands the process. A trademark lawyer can guide us through the filing process with fewer surprises and more confidence. For trusted support, our team of trademark attorneys at Trademark Lawyer Law Firm is here to help, we have successfully registered more than 7,000 trademarks. Contact us today to schedule a complimentary 15 minute consultation.
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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.
What are Disclaimers for Trademarks?
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.
What is the Supplemental Registry?
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.
What is the Date of First Use?
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.
What is the Renewal Timeframe for a Trademark?
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.
Meet Your Team
J.J. Lee
Principal and Founder
Erin C. Bray
Trademark Attorney
Experienced Trademark Attorneys Committed to Protecting Your Brand
Founded by J.J. Lee, the Trademark Lawyer Law Firm, PLLC has successfully registered more than 6,500 trademarks with the USPTO. Dedicated to ensuring that your mark is protected from misuse or theft, our attorneys and staff work closely with clients, taking the time to understand the specific needs of their businesses. Professionally handling each matter with integrity, efficiency, and the personalized attention it deserves, you can rest assured that you have a team on your side who is committed to safeguarding your unique brand.
