Mitchell Stabbe

By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP via the Broadcast Law Blog

Part One

With Selection Sunday this (past) weekend, the 2023 NCAA Collegiate Basketball Tournament is 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.

NCAA Trademarks

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^®. (It also has a registration for SPRING MADNESS^®in connectionwith its soccer tournaments.)

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 also has pending applications for the marks 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 from its annual basketball tournament is the primary source of its annual income.  In 2022, its total revenue was $1.14 B and 85-90% of that came from the men’s tournament.  Although this figure is marginally less than the revenue for 2021, historically, with the exception of 2020 when the tournament had to be cancelled, its revenues have grown each year.

For 2023, the licensing of television rights in the Division I Men’s Basketball Tournament will result in $870M in revenue for the NCAA.  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 current 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:

• In 2017, the NCAA filed a trademark infringement action 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 opposed or obtained extensions of time to oppose applications to register the following marks:
  • STREET MADNESS (automobile shows and car meets)
  • MARCH GREATNESS (charitable fundraising)
  • MAD MARCH (advertising, marketing and promotional services)
  • FINAL FRIDAY (bathrobes, masquerade costumes and various items of clothing, including sports jerseys)
  • MAD IQ BASKETBALL BOARD GAME (board games and online games – this proceeding was resolved when the applicant agreed to exclude games relating to collegiate basketball tournaments)
• In addition, the NCAA currently has an extension of time to oppose an application to register MARSH MANIA (for seeds used to attract wildlife.

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.

Part 2

I wrote about the history of the NCAA’s assembling of the rights to an array of trademarks associated with this month’s basketball tournament.  Today, I will provide some examples of the activities that can bring unwanted NCAA attention to your advertisements or broadcasting of advertising, as well as one more issue that should be considered when considering whether to accept advertising.

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 last  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.”
  • Presumably, to avoid this issue, some advertisers have used “It’s Tournament Time!”
• 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 due to language on the tickets prohibiting their use for such purposes.
• 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 that are 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 2022 [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 and 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).

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 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, a 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 Sweet Sixteen^® and Sweet 16^® 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.

One Last Advertising Issue:  Endorsements by Individual Student-Athletes

After many years of litigation, in July 2021, the NCAA suspended its policy prohibiting college athletes from profiting from their names, images and likenesses (“NIL”) (or their right of publicity) without losing their eligibility.  However, there is no national set of rules as to what is permissible.  Rather, the right of publicity is governed by state law.  Moreover, colleges and universities still have the right establish some rules or standards.  For example, although student-athletes can now get paid to endorse a commercial product, they are not automatically entitled to use any NCAA or school trademarks.  Thus, a college basketball player may not be authorized to wear their uniform in advertising unless the school has granted permission.  Can the player wear a uniform with the school colors, but no names or logos?  Can the player endorse an alcoholic product?  Answers will vary state by state and school by school, so it will be extremely important to check with experienced counsel before running any advertising that involves college players.