With the 2022 NCAA Collegiate Basketball Tournament about to begin, as faithful readers of this blog know, broadcasters, publishers and other businesses need to be wary about potential claims arising from their use of terms and logos associated with the tournament (see, for instance, our articles last year about this same time, here and here). In addition, starting this year, there is another issue to consider, which I will discuss tomorrow.
The NCAA owns 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.
The NCAA has also filed applications for the marks Mask Madness, And Then There Were Eight, And Then There Were 8 and Four It All. 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 with any particular trademark means that the NCAA is not claiming trademark rights.
The NCAA Aggressively Pursues Unauthorized Use of its Trademarks
The NCAA’s revenue associated with its annual basketball tournament are, to say the least, substantial. In 2019, its total revenue from the tournament was $1.05B, which represents more than 90% of its annual revenue. Historically, with the exception of 2020 when the tournament had to be cancelled, its revenues has grown each year.
For 2022, the licensing of television rights in the Division I Men’s Basketball Tournament will result in $870M in revenue for the NCAA. This figure does not include revenue for the television rights in the Women’s Division 1 Women’s Basketball Tournament. It also excludes revenue from ticket sales, which were almost $178 M in ticket sales in 2019.
Although most of the NCAA’s tournament-related income is directly related to the games, 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.
Tomorrow, I will provide some specific examples of actions built around the tournament that could attract the unwanted attention of the NCAA and a new issue to be considered in advertising or accepting advertising relating to the games.
Courtesy Broadcast Law Blog