For all you sports fans out there, March is pretty much the greatest month of the year. The spring thaw is underway, spring training has kicked off in Florida and Arizona, the first PGA major of the year – the Masters – right on the horizon. And, that’s right, March is the time for “March Madness.” In addition to being the best month of basketball all year, “March Madness” also calls to mind one of the classic trademark disputes that I learned about in law school. The “March Madness” trademark has quite the interesting history.
As legend has it (or according to the United States Court of Appeals for the Seventh Circuit), the March Madness mark originated not with NCAA, but with the Illinois High School Association. Since the 1940’s, IHSA had been using and licensing the mark in connection with the Illinois high school basketball tournament. In 1982, when CBS began televising the NCAA tournament championship games, everybody’s favorite Brent (Musburger) used the the term to refer to these games. The term caught on and became widely used in the media and by the public. In 1993 or 1994, the NCAA began licensing the term for use on goods and services related to its tournament.
The first lawsuit relating to March Madness occurred in the 1990’s, when the IHSA sued a licensee of the NCAA over use of the mark. The court there ultimately concluded that similar to a generic term, IHSA’s purported trademark had been appropriated by the public to refer to something other than the IHSA’s basketball tournament. It had become a “dual-use” term which precluded the IHSA from asserting its rights against uses relating to the NCAA’s basketball tournament. This illustrate a mark holder needing to protect its mark, or lose its rights:
A serious trademark holder is assiduous in endeavoring to convince dictionary editors, magazines and newspaper editors, journalists and columnists, judges, and other lexicographically influential persons to avoid using his trademark to denote anything other than the trademarked good or service. These efforts sometimes succeed. IHSA was not assiduous.
There is no magic in labels. Let “March Madness” be called not a quasi-generic term, or a term on its way to becoming generic, but a dual-use term. Whatever you call it, it’s a name that the public has affixed to something other than, as well as, the Illinois high school basketball tournament. A trademark owner is not allowed to withdraw from the public domain a name that the public is using to denote someone else’s good or service, leaving that someone and his customers speechless.
Although basing its decision on principles similar to those involving generic marks. The end result was substantially different. The Court did not conclude that no one could own exclusive rights in “March Madness,” but essentially concluded that there were co-extensive rights. Following the Seventh Circuit opinion, the IHSA and NCAA eventually worked together and formed an entity called March Madness Athletic Association, LLC. MMAA has successfully asserted its rights in court on a number of different occasions.
So a question to all you trademark buffs out there: Isn’t it a bit incongruous to the concept of “exclusive rights” to have distinct organizations claiming exclusive rights in an identical mark, but then agreeing to jointly exploit the mark regardless of any public confusion?