March Madness: the showdown between the Big Ten Conference and the NCAA – who is your number one pick?

It’s the month of March, and most of us are highly aware of the NCAA’s basketball tournament that dramatically decreases work productivity and determines the college basketball national champion. If you’re thinking about entering the hype and using any of the NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. The reason: the NCAA has trademarked a slew of marks associated with the tournament, such as “NCAA,” March Madness,” “Final Four,” the “Big Dance” and any corresponding logos. These marks are all federally registered trademarks of the NCAA, and the NCAA zealously defends them.

The NCAA has been using the mark MARCH MADNESS for over three decades and has recently attempted to claim further rights in the term “March”, quite possibly with respect to any services rendered in conjunction with sports-related entertainment services. This is how it happened. A little over a year ago, the Big Ten Conference filed a federal trademark application based on an intent to use the mark “MARCH IS ON!” for services related to sporting events and contests. The application was reviewed by a United States Patent and Trademark Office (USPTO) examiner, who ultimately determined that there were no conflicting marks that would bar registration of this mark and the application was published for opposition in August of 2016. The NCAA did not respond kindly to this application and after exhausting several extensions of time to oppose formally filed an opposition on Feb. 13, 2017.

The NCAA in its opposition (read it here- Opp. No: 91232826), flimsy in length and detail, claims priority of use and a conclusory allegation that the Big Ten’s intended use is “likely to result in confusion, mistake, or deception with [the NCAA], or the goods and services marketed in connection with [the NCAA’s] MARCH MADNESS Mark, or in the belief that the [Big Ten] or its MARCH IS ON! services in some way [are] legitimately connected with, or licensed or approved by, [the NCAA].” The NCAA doesn’t cite much more information and does not even allege the degree of similarity between the marks, relatedness of goods or services, or harm supposedly caused by the Big Ten’s intended use of the mark.

Although it is clear the services are related and travel in the same channels of trade, whether or not the marks are confusingly similar is more of a challenge. When compared in their entirety side by side, MARCH IS ON! v. MARCH MADNESS, the only similarity is that both marks contain the MARCH term. It is possible to establish a likelihood of confusion based on marks sharing a single term, but if the term is descriptive confusion may be avoided entirely. The term MARCH in both cases describes when the NCAA and the Big Ten tournaments take place, the month of March. The NCAA may be overreaching because they are not limiting their use or objection to basketball related services but are ultimately trying to attempt to exclude others from using the word “March” in conjunction with any sports-related entertainment services.

It’s unclear whether or not the parties will be able to come to a resolution, but if they don’t the Trademark Trial and Appeal Board within the USPTO will ultimately decide whether or not the NCAA can claim rights to the MARCH term with respect to sports-related entertainment services. The opposition has since been suspended for “settlement negotiations” but the month of March is upon us and the “madness” is set to begin. Unfortunately the NCAA’s opposition against the application does not preclude the Big Ten from using the mark. The Big Ten is still free to begin or continue to use the MARCH IS ON! mark, while the negotiations or opposition are pending, unless agreed to by the parties. In order to stop any proposed or continued use, the NCAA would have to file a federal lawsuit seeking an injunction to actually stop the Big Ten’s use.

So if you plan to use any of NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. Using the marks for a commercial purpose may imply some association with the event and sponsors of such events pay money for use of the marks, It’s safest to avoid use of the terms altogether in any marketing or promotional materials that serve a commercial purpose; otherwise, you increase the risk of hearing from NCAA. But this doesn’t mean that companies or individuals are entirely prohibited from using the marks, but it’s important to make sure that the marks are used in an informative context, such as reference to your Elite Eight or Final Four picks, or are used when discussing or commenting on the tournament or events surrounding the tournament.