Sports fans take note-you may not be able to use the words “March Madness” for your business. At any rate, even if you are using “March Madness” to describe your hydrangea and tulip sale and not your sports related product(s)—please be careful.
I was surprised to learn that the NCAA (National Collegiate Athletic Association) did not acquire the “March Madness” trademark registration until 2000. The assignee and prior registrant, the Illinois High School Association (IHSA), had used the mark since 1942. http://www.bizjournals.com/philadelphia/blog/guest-comment/2015/03/why-using-march-madness-to-promote-your-business.html
U.S. Circuit Judge Richard Posner of the Seventh Circuit decided that regardless of how long IHSA had used the name, they couldn’t control “March Madness” when used with the college basketball tournament. https://www.law360.com/articles/633598/law360-cheat-sheet-ncaa-s-march-madness-trademarks
After the ruling, which called “March Madness” a “dual-use term,” IHSA and NCAA teamed up in a compromise and discontinued their legal battles (well for that moment, anyways). The result is a joint entity called March Madness Athletic Association LLC, which manages and owns the name “March Madness”. Id.
You may be wondering-If this high school and athlete association can use “March Madness” with their new association MMAA (I suppose that’s the correct acronym), why can’t you or I?
While it is the case that the Fair Use doctrine is essentially a defense to possible infringement and courts have recognized that ownership of a mark cannot prevent others from using the word or symbol in other ways, they set forth that that the less distinctive or original the trademark, the less able the trademark owner will be to control how it is used. https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law) Which is exactly why I would think something like March Madness would be and could be used for anything and anyone. On a further review of the matter, I learned that the court decision rested on the fact that the term was descriptive and not generic and relied on the evidence presented.
The plaintiff in the case intelligently decided to take a survey of 215 people. It turned out that 180 of the 215 knew about March Madness. 150 of 180 of those people associated March Madness with basketball.
Because of this survey submission as evidence and testifying witnesses regarding the use of the term in broadcasting and other media contexts, Judge Posner decided that the mark was strongly related to the sport of basketball and the trademark’s public association protected it.
As a result, if you see March Madness used for commercial promotions around this time (basketball or non-basketball related) it’s because people are taking a risk or they have paid a licensing fee to the NCAA’s March Madness Athletic Association. This organization makes millions and millions of dollars a year from these licensing agreements.
For now, best you call your basketball or flower sale “Blooming Hoops Sale.” At Mohr IP Law, we welcome your creativity. We can give pointers and sometimes 3-pointers. Contact us today for a free 30 minute no-cost phone or in-person consult with an attorney. You would be full of March, or April, or June or July Madness not to.