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Don’t Let Your Ads Foul Out

14 Mar, 2017 By: Roger A. Colaizzi, Christopher S. Crook, Taylor G. Sachs

March is upon us, which means it is time for the madness to begin. Every year at this time, the National Collegiate Athletic Association (NCAA) gears up to host its annual men’s college basketball tournament. But the basketball court is not the only place where the stakes are high.

It is also enforcement season, as the NCAA prepares once again to police its U.S. trademarks and service marks associated with its basketball championship from advertisers who want to benefit from the popularity of the tournament, but fail to obtain a license from the NCAA. Some of the marks owned by the NCAA include “March Madness,” “NCAA,” “Final Four,” “Elite Eight,” and “March Mayhem.”

As with any other major sporting event, it is tempting for businesses, advertisers, and social media marketers to use “March Madness” hype in an effort to generate sales lift. However utilizing the NCAA’s protected marks – or even marks that may imply an association with the tournament in promotions or advertisements – is a quick way to foul out because the NCAA polices its basketball-related marks aggressively, investing considerable resources during the past 20 years to ensure the protection of its name and related trademarks. This year will likely be no different. In fact, the NCAA last week filed a trademark infringement suit against online video game company Kizzang LLC, alleging that the company’s “April Madness” and “Final 3” games infringe on its “March Madness” and “Final Four” trademarks.

Only the NCAA’s “corporate champions” and partners are allowed to use NCAA marks or references in advertising or promotional campaigns. Any commercial use without specific permission from the NCAA may infringe its trademarks and may result in a cease-and-desist letter from the Association’s attorneys – or being sued by the NCAA.

According to the director of legal affairs at the NCAA, the Association’s enforcement team will likely send hundreds of cease-and-desist letters in 2017 alone, even to advertisers with no connection to sports or athletics. (Bill Donahue, NCAA Sues Online Game Co. Over ‘April Madness,’ Law 360, March 9)

Some examples of enforcement actions include:

And when cease-and-desist demands fail, the NCAA will not hesitate to use the courts to protect its intellectual property. Indeed, the NCAA sued Coors Brewing Co. in U.S. District Court over the beer manufacturer’s promotional campaign that allegedly infringed on the Association’s trademarks. The parties eventually settled the matter, with Coors Brewing Co. reportedly paying $75,000 to the NCAA in settlement of the claims.

The NCAA is only one example of an organization aggressively policing its intellectual property. Other professional sports leagues and the International Olympic Committee (IOC) are extremely vocal and aggressive in brand protection efforts surrounding their events.

Use of trademarks and other intellectual property that belong to others to generate sales lift is hardly restricted to advertising around major sporting events. It occurs in all industries and across every media channel. In addition to considering how to structure advertising claims and promotions to mitigate legal risk and avoid infringing on others’ intellectual property, advertisers and marketers should consult with experienced legal counsel to develop and execute strategies to police and protect their trademarks and other intellectual property.

Roger A. Colaizzi is co-vice chair of Venable’s Advertising and Marketing Litigation group. Christopher S. Crook and Taylor G. Sachs are attorneys in the group. They may be contacted at (202) 344-4000.

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