BY: PAT VANHALL

It’s one of the most celebrated sporting events in the United States with millions of fans filling out tournament brackets each year, attempting to pick who will be the national champion. The NCAA Men’s Basketball Tournament is synonymous with high intensity, buzzer beater plays that break hearts of players and fans alike; hence the name ‘March Madness’®. Now I didn’t really need to insert the Federal Register Trademark symbol after the nickname, since I’m using it in a strictly factual scholarly writing, not for commercial purposes. I included it, however, to introduce one of the foremost legal issues regarding the NCAA Tournament—a legal issue most fans are unaware: ‘March Madness’ is a federally registered trademark.[1. March Madness, Registration No. (pending), http://www.USPTO.gov , (last visit March 25, 2013).]

 

First, a brief look at the history of the term, “March Madness.” An NCAA play-by-play analyst first used the term during a broadcast of the NCAA Tournament in 1982.[2. March Madness isn’t for everyone, natlawreview.com, http://www.natlawreview.com/article/march-madness-isn-t-everyone-trademark-usage, (last visit March 25, 2013).] Prior to that, the Illinois High School Association (IHSA) was using the term to describe its Boys Basketball State Championship tournament.[3. Id.] It had been using the term since the 1940s.[4. Id.] Both the IHSA and the NCAA failed to register the mark until the 1990s and needless to say, a lawsuit commenced, which ultimately led to a ‘dual-use’ of the term for both parties’ basketball tournaments.[5. Ill. High Sch. Ass’n v. GTE Vantage Inc., 99 F.3d 244 (7th Cir. Ill. 1996).] After the ruling, IHSA and NCAA joined forces and created the March Madness Athletic Association to enforce the trademark rights to ‘March Madness,’ and coordinate the licensing use of the term.[6. Supra note 2.]

 

Legal teams for certain companies that have an interest in using the term have argued that ‘March Madness’ is so commonly used that it is basically a generic term–not so fast. The term may in fact be commonly used, but the court held the term to be descriptive and having acquired secondary meaning, therefore qualifying it as a valid trademark.[7. March Madness Ath. Ass’n v. Netfire, Inc., 162 F. Supp. 2d 560 (N.D. Tex. 2001).] The NCAA continues to protect its mark, as evidenced by the out of court settlement made two years ago with a company that was using the mark for mobile device programs.[8. NCAA paid $17M to protect ‘March Madness’ term, usatoday.com, http://usatoday30.usatoday.com/sports/college/mensbasketball/2011-05-10-march-madness_N.htm, (last visit March 25, 2013).] The reason that the NCAA was forced to settle was that this company, Intersport, originally filed and was granted a trademark for March Madness in 1989[9. March Madness, Registration No. 1571340., http://www.USPTO.gov, (last visit March 25, 2013).] before both IHSA and NCAA filed for registration and the company was even licensed the use of the mark by IHSA when a dispute between the two parties arose in the early 90s.[10. Supra note 2.]

 

So why does this matter? There are about 15 registered trademarks for the term ‘March Madness,’ which is now owned by the NCAA (IHSA recently relinquished its rights to the term as long as they were allowed to continue using it for its tournament[11. Supra note 8.]). The word and design marks cover everything from use on TV and broadcasting, t-shirts and memorabilia and even soft drinks.[12. David Silverman, Is it Madness to Say ‘March Madness’ On the Air?, Broadcast Law Blog, (March 6, 2011),  http://www.broadcastlawblog.com/2011/03/articles/intellectual-property/is-it-madness-to-say-march-madness-on-the-air-the-trademark-issue/.] Any commercial use of the term will likely be found and enjoined by the long-arm resources of the NCAA. Due to the almost second nature word association of the term to the tournament, many still do not know that the term is trademarked. What some believe to be an innocent use of a generic term may in fact be an actionable trademark infringement. With all of the NCAA’s registered trademarks this really should not come as a surprise to most people, but if one is planning the unauthorized use of ‘March Madness,’ a simple rule should be followed: do your homework and ‘user beware.’