How Far Do You Go To Enforce Your Trademarks?

George Carlin’s list of words you could not say on television is among the classics.  Although the list has evolved over time, the NCAA has another list of words that is vying for attention when you talk about men’s college basketball. This list applies, not just on television, but everywhere.

The Kansas City Star, in covering the two rounds of games held here in Kansas City, noted the great lengths that the NCAA goes to in protecting its trademarks —  from the NCAA bringing in its own basketball court (stripped of any logos other than its own), to warning area businesses not to use any of the 67 trademarks it has registered, to hiring scouts to spot potential infringers, and to keeping cups out of the Sprint Center other than those emblazoned with the official beverage sponsor’s logo.

The cup sensitivity is apparently not a new thing as it even had someone replace basketball coach Roy William’s cup during a press conference after his team advanced in the tournament several years ago. Apparently, his cup did not have the proper logos on it.

I don’t have a problem with the NCAA enforcing its trademarks or limiting the exposure of marks of other companies who are not paying for the right to show their marks during the tournament.

If CBS paid you $6 Billion over eleven years, you would protect your tournament as well.  And one of the best ways of protecting it is to brand the heck out of it.  For those of you who saw Eddie Murphy in the movie, “Coming to America“, don’t think that McDonald’s won’t clobber you on the head with a team of litigators if you opened up your own real-life version of McDowell’s fast-food burger joint.  I would even help.

I was, however, interested in some of the trademarks on the list sent to area businesses.  Nobody should be surprised that “March Madness” is on the list.  Actually, you may want to read the Miller Small Business IP blog on who actually owns the mark and the interesting history of the “March Madness” mark.  Also not surprisingly, you cannot lure customers into your restaurant, hotel or shop using these trademarks:

  • NCAA;
  • Sweet 16;
  • Elite 8;
  • Final Four;
  • The Big Dance; or
  • The Road to the Final Four

But, there were other marks such as the “YES” mark that were not immediately obvious that a business should steer away from using.  You do hear commentators say “Yes!” through the course of a game when a player makes an incredible move that usually ends in a monster dunk.  But, “Yes” in that context doesn’t strike me as a source indicator.  Nor am I aware that the YES mark was emphasized in advertising or said anymore often than in the broadcast of other sports events.

The YES trademark registration with the U.S. Patent and Trademark Office is limited to goods or services involving “organizing and conducting sports clinics for students, grades 6-12.”  So can a restaurant hang a banner that simply says:  “YES!”? I doubt that anyone is claiming that the YES mark is famous so the normal trademark analysis would likely apply.  Will restaurant goers seeing the banner believe that the restaurant is somehow affiliated with a sports clinic put on by the NCAA?

There may be some great arguments for why YES is on the list that restaurants and hotels need to avoid, but it got me thinking:  “What if there is no plausible argument of confusion?” Would the NCAA have gone too far if it sent warning letters to businesses in host cities not to use marks that really don’t apply?  What do you think?

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About Dave Rein

Dave Rein focuses on and will continue to focus on copyright, trademark and patent litigation until the National Geographic adds him to its staff of photographers. In addition to counseling and litigating on behalf of the firm’s clients, he also helps clients through the Kansas City Volunteer Lawyers and Accountants for the Arts where he also serves as a board member. Prior to representing clients, Dave clerked for a federal district court judge who kindly provided invaluable advice and mentorship
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