UNAUTHORIZED USE OF NCAA TRADEMARKS COULD HAVE YOU RIDING THE PINE
With the annual NCAA Basketball Tournaments just days away, many people are busy filling out their brackets and getting ready to watch their favorite teams compete for the big prize. You may have noticed in my opening that I didn’t use terms such as BIG DANCE®️, MARCH MADNESS®️ or FINAL FOUR®️. That is because those names are federally registered trademarks owned by the NCAA. The improper and/or unauthorized use of those names could result in you being called for a foul in the form of a cease and desist letter or even a lawsuit from the NCAA. So what are the rules? When can you use MARCH MADNESS®️ or one of the 70+ names, phrases and images that are registered trademarks associated with the famous basketball tournament?
As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of BIG DANCE®️, MARCH MADNESS®️,or FINAL FOUR®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NCAA. So technically, any use of such registered marks would constitute infringement.
However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.
Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.
The 70+ Trademarks are valuable assets
The NCAA reported total revenue of $1.18 Billion associated with the NCAA tournament in 2019. Due to cancellation of the tournament in 2020 as a result of the COVID 19 pandemic, that figure was down to $519 million, which included a $270 million insurance payout for cancellation of the tournament. While the biggest portion of that revenue comes directly from broadcasting rights ($804 million in 2019), a significant portion of the revenue associated with the NCAA Tournament is derived from licensing fees for merchandise and authorized partners who pay fees to the NCAA to be the official this or that of the NCAA Tournament. Hundreds, if not thousands of businesses line up each year and pay fees to the NCAA to be “authorized” partners and use one or more of the 70+ trademarks associated with the NCAA Tournament.
The NCAA aggressively pursues infringers of its trademarks
With so much money on the line, it is no wonder the NCAA aggressively pursues those who use its trademarks without permission. For example, in 2017, the NCAA filed suit against a Las Vegas-based fantasy sports sweepstakes company that was using the phrases “Final 3” and “April Madness” in its events related to the NCAA Division I Men’s Basketball Championship. While the marks were not identical to the NCAA’s marks, the court concluded that they were “obviously similar” and that the defendants “planned to use the marks in connection with contests and events related to NCAA basketball games” indicating “willful infringement.” The defendants were permanently enjoined from using the Final 3 and April Madness phrases and any other variations thereof that would be confusingly similar to the NCAA marks and were ordered to recall all infringing products. The court further invited the NCAA to file a motion for attorney fees, suggesting that it may order defendants to pay the NCAA’s attorney fees as well. Since January, 2020, the NCAA has filed over 25 opposition/cancellation actions against other parties who have registered or have attempted to register trademarks with the U.S. Trademark Office that the NCAA believed were similar to it’s marks. Included in that list is was a petition to cancel a registered trademark for VASECTOMY MADNESS and a petition opposing registration of MARCH MODNESS.
Tips to avoid being called for a foul
Unless you are specifically authorized by the NCAA, the following are things that you should avoid if you don’t want to draw the attention of the attorneys for the NCAA:
- Advertising for your products or services that refers to the NCAA, MARCH MADNESS or any of the other 70+ marks owned by the NCAA related to the NCAA Basketball Tournament. (Example: A car dealership adveristing “March Madness” pricing on new/used vehicles in the month of March).
- Promoting an event, gathering, party or the like by making reference to the NCAA or its marks. (Example: A sports bar advertising in a magazine to “Come watch the BIG DANCE on our Big Screen TVs”).
- Hosting contests, sweepstakes or giveaways that make reference to the NCAA or its marks. (Example: The “March Madness Sweepstakes”).
- Placement of an advertisement for your product or services within an NCAA bracket. (See guidelines by clicking here).
If you are still in doubt, the NCAA provides additional direction and guidance on the proper use of its marks here. Or better yet, contact us for expert advice on whether your use is permitted.
