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The Big Ten and the NCAA Tip Off for MARCH Marks

Posted in Dilution, Famous Marks, Goodwill, Infringement, Trademark Bullying, Trademarks, TTAB

You don’t have to be a sports fan to be aware of MARCH MADNESS, the name associated with the annual tournament to determine the college basketball national champion. The tournament is organized by the National Collegiate Athletics Association. The name MARCH MADNESS is derived from the fact that the tournament occurs almost exclusively in March. Conferences big and small from throughout the country participate in the tournament. But one of those conferences, the Big Ten Conference, is entering a legal battle with the NCAA over the scope of the NCAA’s rights in its MARCH MADNESS trademark.

The Big Ten wants to use the tagline MARCH IS ON! to promote, sponsor, organize, and broadcast its sporting events. It filed an intent-to-use application to register the mark with the U.S. Patent and Trademark Office (USPTO). The USPTO reviewed the application and determined that the mark was eligible for registration and published the application. Unfortunately for the Big Ten, the NCAA thinks that the Big Ten’s use MARCH IS ON! will harm the NCAA’s rights in MARCH MADNESS. On February 13, the NCAA filed a Notice of Opposition to the application (available here).

The Notice of Opposition doesn’t include much detail in support of the claimed harm. Instead, other than the claim of priority, the Notice of Opposition includes a conclusory allegation that the Big Ten’s proposed use “is likely to result in confusion, mistake, or deception with [the NC, or the goods and services marketed in connection with [the NCAA’s] MARCH MADNESS mark.” The Notice of Opposition does not even allege that the marks are similar or that the goods or services are related. In light of the narrow scope of authority, pleading requirements are pretty liberal at the Trademark Trial and Appeal Board (TTAB), but even the NCAA’s Notice of Opposition is pretty sparse on factual allegations, even for a TTAB pleading.

While establishing the services are related should be an easy layup, demonstrating that the marks are similar might be a big more challenging. After all, the only similarities in the marks consist of the shared term MARCH. There is no similarity of meaning (as you might have with MARCH INSANITY) or similarity in sound (MARCH MAYHEM). Sharing a single term can be sufficient to establish a likelihood of confusion in some circumstances, but confusion may be avoided if the shared term is descriptive of the services or weak in some other way. If the NCAA’s mark was BASKETBALL MADNESS, it would be difficult to claim that consumers would be confused with the Big Ten’s use of BASKETBALL IS ON!

While MARCH isn’t as weak as BASKETBALL, the term describes when the NCAA tournament occurs and when the Big Ten basketball tournament occurs. It seems like the claim may be an overreach by the NCAA. But who knows, perhaps this claim will be another of the many Cinderella stories associated with the NCAA. We’ll have to check back in the second half.