A FOUL OR A FAIR USE: Use or abuse of the NCAA’s March Madness Mark

The NCAA vigorously enforces its exclusive right to use the marks associated with its annual basketball tournament in March. And it goes into a full-court press to keep its mark from use by sports bars and gyms, restaurants and retailers. Thinking about running a promotion during this time? Eckert Seamans’ IP team can help you stay out of foul trouble. IP Co-Chairs Roberta Jacobs-Meadway and David Radack, as well as Christina Frangiosa and Alexander Fleisher, recently shared their thoughts on how companies can stay out of IP-related foul trouble.

David Radack discussed the history behind the “March Madness” trademark with WTOP radio in Washington, DC, noting that “It was used by a high school tournament in Illinois starting in 1939. They called their high school basketball tournament in Illinois March Madness,” said Radack. “It really became popular was in 1982, when Brent Musburger, who was from Illinois and was familiar with the March Madness high school tournament, started calling the NCAA tournament March Madness, and it kind of took off from there.” (Link)

Roberta Jacobs-Meadway and Alexander Fleisher wrote “’March Madness’ Trademark Tips and Traps” for Law360.com, offering that “At some point, perhaps the NCAA’s enforcement strategy of fighting against uses of the “March Madness” mark whether or not the use is actually fair and whether or not there is any likelihood of confusion as to sponsorship, may actually be put to the test, either by a company with insurance to cover the cost of defense or pro bono counsel, or by a privately held company responsible to no shareholders. If a party were to emerge victorious in such a fight against the NCAA, it could send a ripple effect through the world of marketing sporting events. No longer would stores need to offer “big game” and “college hoops championship” specials, but rather could have “Super Bowl” and “March Madness” specials. Until such time, however, discretion may be considered by most the better course.” (Link)

Jacobs-Meadway also contributed her thoughts to Wall Street Journal sports columnist Jason Gay’s piece, “The NCAA’s Madness Over March.” The NCAA is challenging the Big Ten for its effort to trademark a phrase it believes infringes upon one of its own trademarks. The Big Ten wants to say “March is On!” Is the phrase a threat to the NCAA trademarked phrase ‘March Madness’? “I think it’s a stretch,” noted Jacobs-Meadway. (Link)

Christina Frangiosa penned “Planning a ‘March Madness’ Promotion for Your Business? Beware the NCAA’s Wrath” for Entrepreneur, and warns of the risks associated with running commercial playing off the names March Madness or Final Four. “The NCAA vigorously enforces its exclusive right to use these names in connection with collegiate basketball and, particularly, in connection with the NCAA Tournament in March. Such enforcement covers not only to the NCAA’s March Madness registered mark, but also extends to unauthorized uses of its other registered marks, such as Final Four, Elite Eight, Midnight Madness, NCAA Basketball and the NCAA Experience.” (Link)

Radack also talked to Metropolitan Corporate Counsel about what companies should do to ensure that they are not on the wrong end of an NCAA trademark disputes. “Make sure you have someone in-house or somebody outside that understands trademark law. Realize that you can’t use people’s trademarks. A lot of people fall into the trap of, ‘Well, everyone else is using it, so I can do it, too.’ But they don’t realize that everyone else is using it in a fair use, or in a First Amendment or a freedom of the press type of situation, not commercially.