The Chilling Effect Trademark Bullying Can Have on Speech

The National Collegiate Athletic Association has and continues to aggressively enforce its trademark rights in the MARCH MADNESS trademark. In fact, its reputation for trademark enforcement is so well known that the KFANN sports radio station in Minneapolis, MN will not use the entire phrase MARCH MADNESS in an advertising spot for a local restaurant chain for fear of being sued by the NCAA. Instead, the word MADNESS is replaced with the sound of buzzer to indicate that the NCAA Men’s Basketball Tournament can be watched at this particular restaurant. This is a prime example of the chilling effect that trademark bullying can have on speech even when the speech is legal.

The NCAA’s first Trademark Trial and Appeal Board proceeding was commenced on May 24, 2007 against the University of Kentucky’s BIG BLUE MADNESS trademark application. Since then, NCAA has opposed:

  1. MOJO MADNESS for “prepared potatoes,” which is it ultimately lost when Shakey’s USA, Inc. voluntarily amended its description to “MOJO brand potatoes prepared at Shakey’s restaurants.” As an aside, this is a good example of how details a broad goods description may have to become in order to win a likelihood of confusion battle.
  2. MARCH RADNESS for a variety of clothing articles, which the NCAA won.
  3. LIVE THE MADNESS for a variety of clothing articles, which the NCAA won.
  4. APRIL MADNESS for sweepstakes, which the NCAA won.
  5. MARKDOWN MADNESS for automobile dealerships, which the NCAA lost.
  6. MARCH MATNESS for a website featuring entertainment information, which the NCAA won.
  7. MARCH IS ON! for coordinating and promoting athletic events, which the NCAA lost.
  8. MUNCH MADNESS for dips, processed vegetables, and chips, which the NCAA won.
  9. BASKETBALL MADNESS for downloadable video games, which is ongoing but suspended in light of a lawsuit filed in the United States District Court of the Eastern District of Kentucky. As an aside, the NCAA also petitioned to cancel the mark XOOKER, which is owned by the same owner of the BASKETBALL MADNESS mark. Hard not to construe that action as clear trademark bullying.
  10. And the most recent proceeding against MARCH MULLIGANS for sweepstakes, games of chance, and contests.

These are just the actions taken by the NCAA before the Trademark Trial and Appeal Board, but the NCAA has a reputation for also firing off demand letters. Some of these actions are legitimate, but several of them are not. It’s this overreaching that creates a trademark bully.

Not every use of another party’s trademark amounts to infringement. Under the doctrine of nominative fair use, a party – even a competitor – can use another party’s trademark to refer to that party provided only so much of the trademark is used to refer to the trademark owner. In other words, don’t use the full logo if the words are enough to refer to the trademark owner. In the case of the KFANN advertising spot, the radio station can legally use MARCH MADNESS to refer to the NCAA Men’s Basketball Tournament and should fear reprisal from the NCAA because of its overly aggressive trademark enforcement behavior.

Trademark Fair Use Protects Use of LOL, WTF, FML, and NBD

Trademark fair use is an important concept that trademark owners should be aware of when selecting a new name. It is a lesson that can be learned form the Procter & Gamble’s attempt to register some common acronyms. Procter & Gamble made a lot news recently about trademarking popular millennial messages like LOL, WTF, FML, and NBD. Procter & Gamble filed trademark applications for these acronyms in connection with soap and other household cleaners. The majority reaction at the attempt at trademarking these acronyms has been negative with a hint of criticizing P&G for beingĀ self-righteous. How can a big company like Procter & Gamble think that they can own a trademark for common phrases like LOL, WTF, FML, and NBD? These comments stem from a misunderstanding of what is required to establish trademark rights in the first place.

We have discussed before that there is no such thing as a trademark right in gross. In other words, trademark rights must be in some thing either a physical good or service. In this case, Procter & Gamble will use the LOL, WTF, FML, and NBD acronyms in connection physical goods soap and other household cleaners. These goods are the starting point for its rights in these acronyms. Where the rights go from there is anybody’s guess, but given the proliferation of the use of these acronyms, the smart money is on Procter & Gable’s rights remaining limited to soap and other household goods.

Another misconception about Protecter & Gamble’s attempt at trademarking LOL, WTF, FML, and NBD is that no one else will be able to use these acronyms in connection with soap and other household goods. While Procter & Gamble may obtain trademark registrations, these acronyms clearly have a descriptive aspect. Individuals and companies are free to exploit the descriptive aspect of these acronyms even if the context of this use is in connection with soap or household cleaners. This principle is called is classic fair use, and is an issue trademark owners need to understand exists when they adopt words or phrases with known meanings as their trademark.