In March Madness Athletic Ass’n v. Netfire, Inc. et al., No. 3:00-CV-398-R, 2003 WL 22047375 (N.D. Tex. Aug. 28, 2003), defendant Netfire contended that the trademark “March Madness” was generic and thus, its acquisition and use of the domain name www.marchmadness.com for a web site that focused on the NCAA Division I Men’s Basketball Championship was lawful. While one might think the March Madness trademark served as a strong indicator of source and sponsorship of NCAA basketball tournaments, it turned out that the result in this case was no slam dunk for the tournament sponsor owning the mark.
A generic term,1 which by law cannot function as a trademark or source identifier,2 is one that refers to a particular article or service itself. In other words, it is a term commonly used as the name of a kind of product or services. One way to determine whether a term is or has become generic is to ask: does the public perceive the term primarily as the designation of the article as opposed to an indicator of the source of the article?3 While a generic term cannot be trademarked, it is possible for a word to be generic as to some goods and services and not others; in such case, the word may receive trademark protection for its non-generic use.4 Still, a trademark can become generic over time if the trademark owner does not properly enforce its rights. This was one of the issues in March Madness Athletic Ass’n.
The trademark “March Madness” originated with the Illinois High School Association (“IHSA”), which used the mark as early as 1939 in reference to its annual high school basketball tournament. In 1982, a CBS reporter from Chicago began using the phrase to describe the NCAA men’s Division I basketball tournament. From the 1980s to date, “March Madness” has been used by the media and members of the public nationwide to refer to the NCAA basketball tournament in March of each year. The IHSA received federal registration for “March Madness” by mid-1995.5 However, IHSA’s claimed right to the mark clashed with that of the NCAA, which believed it had a common law trademark in “March Madness” by the early 1980s. In 1996, IHSA sought a preliminary injunction against a licensee of the NCAA, GTE Vantage, Inc., to enjoin it from using the mark in a video game related to the NCAA tournament. The U.S. District Court for the Central District of Illinois denied IHSA’s request for an injunction on the basis that the IHSA was not likely to succeed on the merits because the mark had been diluted by the association of “March Madness” with the NCAA basketball tournament. The Seventh Circuit upheld the ruling, holding that “March Madness” had become a ‘dual-use term,’ analogous to a generic term that the public has affixed to something other than the Illinois high school basketball tournament.6 The Seventh Circuit, per Judge Posner, opined that IHSA’s claim lacked merit and that on remand the district court should enter judgment for the defendant.7 The appellate court also stated that it was not opining on the scope of the respective trademark rights of the NCAA and IHSA “beyond ruling that IHSA’s rights do not extend to the NCAA tournament and to merchandise sold in connection with that tournament.”8
Several years later, on February 29, 2000, the IHSA and NCAA pooled their trade and service mark resources in “March Madness” and formed a limited liability company named March Madness Athletic Association (“MMAA”). Pursuant to the MMAA Agreement, the IHSA and NCAA assigned all rights in the mark to MMAA, but granted each party an exclusive, perpetual license for use of the term in connection with their respective basketball tournaments.
Meanwhile, in 1996, defendant Netfire, Inc. (“Netfire”), on behalf of defendant Sports Marketing International, Inc. (“SMI”), acquired the domain registration for www.marchmadness.com.9 In early 2000, IHSA10 sued Netfire and SMI. In August, 2001, defendants moved for summary judgment on all of plaintiff’s claims on the grounds that the plaintiff did not have a protectable mark. Plaintiff cross-moved for partial summary judgment, asking the court to rule as a matter of law that MMAA owned a protectable mark. The district court denied the motions, finding that sufficient evidence existed to support the arguments of both sides and that trial should proceed.
After reviewing the evidentiary record at the ensuing trial, the court concluded that “March Madness” was not generic, and categorized the mark as a descriptive one that had acquired secondary meaning. In making its determination, the court relied heavily on plaintiff’s survey evidence, which indicated that of 215 qualified respondents, 180 had heard of March Madness, and 150 associated it with basketball. Of the 150 who associated March Madness with basketball, 98 (61.3%) stated that it was a trade name, 48 (32%) stated that it was a common name, and 9 (6%) said they did not know.11 The court also cited as credible witness testimony regarding (1) CBS’s use of the term in its national broadcasts of the NCAA tournament and related programming because it believed that the public understood the term to mean the NCAA Tournament and (2) CBS’s interviews of approximately 200 people who were asked if they associated “March Madness” with the NCAA Tournament. Additionally, the court noted the many media uses of “March Madness” to refer to the NCAA Tournament, including crossword puzzles in both the New York Times and USA Today which contained the clue “March Madness org” and the answer “NCAA.”12
The court determined that the mark was strong within the context of basketball and rejected as largely irrelevant defendants’ evidence of numerous third party uses of “March Madness” in commercial settings. Some of the uses involved other sporting events, but the court noted that there were only a few isolated instances of unauthorized use by third parties that fell within the scope of basketball.13 The court also rejected defendants’ argument that two of plaintiff’s witnesses admitted during their depositions that the mark was generic, both stating that it “transcends the particular use of both the Illinois High School Association and the NCAA and means seasonal culmination of the sport of basketball.”14 The witnesses testified that their respective statements meant “March Madness is a strong enough term that it can be marketed and licensed outside the sport of basketball.”15 The court found their views reasonable but pointed out that “it is the view of the prospective purchasers which controls, not that of the term’s licensors.”16 Further, the court corrected defendant’s interpretation of the Seventh Circuit’s holding in IHSA v. GTE Vantage, indicating that Judge Posner’s analysis of dual-use terms was not necessary to support his holding.17 The court also noted that defendants had not offered survey evidence and that SMI’s own web site was entirely devoted to the NCAA Tournament.
The March Madness case serves as a reminder to trademark owners that it is important to guard vigorously the significance of their marks by making the public aware that the mark is intended to identify the product/service as deriving from a particular source, by monitoring the market for incorrect/infringing uses, and by taking necessary steps to prevent those uses.
1 The other three types of trademarks are: (1) fanciful or arbitrary marks, which are marks that bear no relationship to the product or service with which they are associated and receive the greatest trademark protection; (2) suggestive marks, which are marks that suggest some characteristic of the goods to which they are applied, require some exercise of imagination to reach a conclusion as to the nature of the goods, and receive less protection than an arbitrary or fanciful mark; and (3) descriptive marks, which are marks that describe a characteristic or quality of an article or service, e.g., color, odor, function, dimensions, or ingredients, and only receive trademark protection if they acquire secondary meaning, i.e. connote a mental association in buyers’ minds between the mark and a single source of the product. March Madness Athletic Ass’n, L.L.C. v. Netfire Inc., 162 F. Supp.2d 560, 568 (N. D. Tex. 2001) (citations omitted).
4 Id. See, e.g., Soweco Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (finding that “ivory” is generic for elephant tusks but arbitrary as applied to soap).
5 IHSA acquired the mark, for “entertainment services, namely, presentation of athletic and entertainment personalities in a panel forum,” by assignment from an earlier registrant, Intersport. IHSA also registered variations of “March Madness.”
6 Illinois High School Ass’n v. GTE Vantage Inc., 99 F.3d 244, 247 (7th Cir. 1996). The phrase “dual-use” refers to those terms that have become generic to a portion of the market and a trademark to another class of customers. J. Thomas McCarthy, Trademarks and Unfair Competition, § 12:51 at 120 (2002).
7 Illinois High School Ass’n, 99 F.3d at 248.
9 This article does not discuss in any detail the acquisition of the domain registration for www.marchmadness.com or the court’s determinations that the use of the domain name: (1) infringed the “March Madness” mark; (2) was in violation of the Anti-Cybersquatting Consumer Protection Act (“ACPA”); and (3) was not a fair use under the ACPA. The court ordered the transfer of the domain name to the NCAA.
10 Subsequently, MMAA became the sole plaintiff of record.
11 March Madness, 2003 WL 22047375, at 14. Earlier, the same court compared the 61.3% result for “March Madness” with the 92% and 93% results for the terms “Kentucky Derby” and “Stanley Cup,” which were recognized as trademarks. See March Madness, 162 F. Supp.2d at 572.
12 March Madness, 2003 WL 22047375, at 14.
13 Id., at 15.
14 Id., at 21.
17 IHSA v. GTE Vantage, Inc., 99 F.3d at 247 (stating Judge Posner’s holding that “A trademark owner is not allowed to withdraw from the public domain a name that the public is using to denote someone else’s good or service. . . . It is an issue of first impression, and we think that for the sake of protecting effective communication it should be resolved against trademark protection, thus assimilating dual-use or multiple-use terms to generic terms.”). Section 14(3) of the Lanham Act, 15 U.S.C. § 1064, states that “A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service.”