« phosita ::: quick links for 2005-03-22 | Main | phosita ::: quick links for 2005-03-23 »

March 22, 2005

March Madness - As A Registered Trademark?

People are dumbfounded at the thought of "The Donald" filing a trademark application for the phrase "you’re fired" or Paris Hilton filing for a registration on "that’s hot." So nobody would be surprised to hear of applications filed on "March Madness." However, unlike "you’re fired," or "that’s hot," actual registrations have issued for "March Madness." Interestingly, the phrase has only been used to refer to the NCAA tournament since the early '80s. However, it was used to refer to basketball long before that.

The Slate discusses the history of several terms, including "Sweet Sixteen," "Final Four," and "Big Dance, and "March Madness," stating:

March Madness traces back to Illinois' statewide high-school basketball tournament, which began in 1908. In 1939, an official with the Illinois High School Association, Henry V. Porter, penned an article called "March Madness" for the organization's in-house magazine. "A little March madness may complement and contribute to sanity and help keep society on an even keel," he wrote. Three years later, he followed up with a poem, "Basketball Ides of March," which read in part: "A sharp-shooting mite is king tonight/ The Madness of March is running."

The phrase was confined to Illinois high-school ball until 1982, when CBS broadcaster (and ex-Chicago Daily News sportswriter) Brent Musburger used it during his network's NCAA tournament coverage. The IHSA, meanwhile, applied to trademark "March Madness" in 1989. The NCAA and IHSA clashed in 1996, when the IHSA sued to stop GTE, an NCAA corporate partner, from distributing a CD-ROM game bearing the March Madness title. The NCAA contended that it had a common-law trademark on the phrase and was thus allowed to license it at will. The 7th Circuit Court sided with the NCAA, but its ruling was vague enough to open the door for future litigation. Rather than endure more rounds in court, the two sides agreed to form the March Madness Athletic Association, a joint holding company. The IHSA controls the name on the high-school level, while the NCAA has a perpetual license to use the phrase in connection with its (much larger) collegiate tournament."

I know what you’re thinking. The term "March Madness" must have become generic. Everybody uses it, and nobody thinks twice about doing so. However, this issue has been addressed recently and the term is not generic. This finding was reported by the blog Small Business IP Protection and Management in the posting: March Madness Trademark (posted March 9, long before we at PHOSITA caught on).

According to Doc’s Sport Service, a case, March Madness Athletic Assn., LLC v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003), addressed the issue of whether the mark has become generic:

MMAA’s trademark rights to "March Madness" was contested in the federal district court action by the defendants, Sports Marketing International, Inc. ("SMI") and Netfire, Inc. ("Netfire"), who contended that "March Madness" is a generic term and that their acquisition and use of www.marchmadness.com was lawful. . . .

MMAA claimed that it was entitled to relief against the defendants for cybersquatting, false representations, trademark infringement, and unfair competition under the Lanham Act and state law. . . .

In reaching its decision, the federal district court made extensive factual and legal findings that could almost serve as a textbook for understanding the concept of trademark infringement. The court found that "March Madness" is a descriptive mark that has acquired secondary meaning and therefore is protectable as a trademark.

This decision was affirmed by the 5^th Circuit earlier this year (120 Fed. Appx. 540, 73 U.S.P.Q.2d 1599).

Through all the madness, I'm still cheering for my favorite team. Go Pokes!

Posted by Melody Wirz at 02:50 PM.
Permalink: March Madness - As A Registered Trademark?
| Comments (1) | Sphere: Related Content