I have published several articles over the years about sports related trademark lawsuit and the protectiveness of famous trademark in sports marketing, such the NCAA’s MARCH MADNESS trademarks, the NFL’s SUPER BOWL trademarks, and even the International Olympic Committee (IOC) trademarks for OLYMPICS.
Since it’s March 2021, let’s highlight a recent legal trademark litigation case where NCAA sent a cease and desist letter followed by a federal complaint for trademark infringement against Ken Grody Management, Inc. and Vince Dixon Ford, Inc. over the defendant’s use of the term “Markdown Madness” to promote its automobile dealership.
In 2018, the National Collegiate Athletic Association (NCAA) took this federal action because a Southern California dealership got the idea of banking on the most famous intercollegiate competition in the world, the NCAA tournament, and the famous trademarks, brands, and logos associated with the “SWEET 16”, to generate some buzz for its dealership In weeks leading up to the FINAL FOUR (another protected NCAA trademark, see this blog for details about that trademark), and started using “Markdown Madness” in advertising.
The NCAA was not pleased. Particularly because it generates millions of dollars in revenue per year, with the highest earnings around the NCAA tournament season, to license its famous MARCH MADNESS, SWEET 16, and FINAL FOUR brands to various automotive related promotions. The Southern California’s use of “Markdown Madness”, according to the NCAA, caused a likelihood of confusion between with its MARCH MADNESS trademark and the dealership thus must cease and desist all promotions and activities related thereto, and pay the NCAA legal damages or financial damages in connection with trademark infringement.
The parties eventually settled out of court later that year.
The NCAA is very protective of its trademark portfolio, and takes notable steps to advise the public on do’s and don’ts and when it comes to its trademark rights. The NCAA continuously publishes and updates the NCAA Trademark Protection Program. Entrepreneurs, tech startups, and other major companies with robust brand portfolios, and federal trademark portfolios in the United States Patent and Trademark Office, are well advised to consider a trademark protection program that suitably enforces the companies exclusivity to its trademark rights.
It also publishes its list of trademarks, which include:
Note: ® signifies registered trademark in federal database on USPTO records.
| 68 TEAMS, ONE DREAM® |
| And Then There Were Four® |
| Beyond the Baseline® |
| Champions Play Here® |
| Champions Win Here™ |
| College Cup® |
| 1College World Series® |
| CWS™ |
| Dribble™ |
| Eight at the Plate™ |
| Elite 8® |
| Elite Eight® |
| Elite 90™ |
| Experience It Live™ |
| F4™ |
| Final 4® |
| Final Four® |
| Final Four Friday® |
| First Four® |
| Four It All™ |
| Frozen Four® |
| History Happens Here® |
| It’s More Than Three Games® |
| Make it Yours® |
| March Madness® |
| March to the Madness™ |
| March Mayhem™ |
| Midnight Madness® |
| Men’s College Cup® |
| Men’s Elite Eight® |
| Men’s Frozen Four® |
| National Collegiate Athletic Association® |
| National Collegiate Championships® |
| NCAA® |
| NCAA After The Game® |
| NCAA Basketball® |
| NCAA Championships® |
| NCAA Fast Break® |
| NCAA Hall of Champions® |
| NCAA Photos® |
| NCAA Sweet 16® |
| NCAA Sweet Sixteen® |
| NCAA Team Works® |
| NCAA Ticket Exchange® |
| Next Generation Sunday® |
| Pinnacle of Fitness® |
| Protect the Game® |
| Read to the Final Four® |
| Road to the Final Four® |
| Selection Sunday® |
| Share The Experience™ |
| Stagg Bowl® |
| The Big Dance® |
| The Final Four® |
| The Greatest Show on Dirt® |
| The NCAA Experience® |
| The Pinnacle Awaits® |
| The Road Ends Here® |
| The Road Starts Here® |
| The Road to Atlanta™ |
| The Road to Frisco™ |
| The Road to Indianapolis® |
| The Road to Minneapolis™ |
| The Road to New Orleans™ |
| The Road to Omaha® |
| The Road to Tampa Bay™ |
| The Road to the Final Four® |
| Women’s College Cup® |
| 1Women’s College World Series® |
| Women’s Elite Eight® |
| Women’s Final 4® |
| Women’s Final Four® |
| Women’s Frozen Four® |
What entrepreneurs, trademark owners, and tech startup companies in software, hardware, or just a local service provided such as car dealer ship can takeaway from this is that trademark owners have a duty to police their trademarks, and enforce trademark exclusivity against third parties who are using their trademark (unauthorized use), or brands that cause a likelihood of confusion in the marketplace. Some trademark owners, including those in the highly lucrative worldwide sports and entertainment industry, including intercollegiate sports and professional sports, are even more zealously protected, as illustrated by similar zealous oversight, trademark enforcement, and brand exclusivity protection by entities such as the National Football League (NFL), or the International Olympic Committee (IOC), and discussed here, by the National Collegiate Athletic Association (NCAA) In and trademark owners are well advised to consult with an experienced sport marketing trademark attorney and intellectual property law firm in Los Angeles, New York, Atlanta, Miami, or Dallas, before adopting a major marketing campaign which may or may not be leveraging third party intellectual property assets, such as trademarks.
