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.

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