The National Collegiate Athletic Association, better known as the NCAA, filed a petition before the Trademark Trial and Appeal Board to cancel a trademark registration for the mark “VASECTOMY MADNESS” (U.S. Reg. No.: 6143370) in connection with “Physician services; medical services, namely, treatment services in urology for adults; medical evaluation services, namely, functional assessment program for patients receiving urological treatment services for purposes of guiding treatment and assessing program effectiveness; urologic surgery” in International Class 044. The VASECTOMY MADNESS registration is owned by Richmond, Virginia-based urology clinic, Virginia Urology, which claims to have used the mark in commerce since December 13, 2019.
The NCAA claims a long list of trademark registrations, many of which of are incontestable, encompassing the marks MARCH MADNESS, MARCH MAYHEM, and other marks using MADNESS OR MAYHEM for collegiate sports tournaments, specifically the annual NCAA Division 1 Men’s College Basketball Tournament, which the NCAA has used since at least as early March 10, 1986. During this time, the NCAA spent millions of dollars in advertising the events and has sold millions of dollars worth of goods and services in connection with the marks. The NCAA claims that due to such extensive use of the marks, the NCAA marks have acquired distinctiveness and become famous. Because of the fame of the NCAA marks, Virginia Urology likely knew, or should have known, of the NCAA marks prior to filing the application, and any continued use of the mark VASECTOMY MADNESS is likely to draw comparisons or suggest an affiliation with the NCAA Marks.
The complaint alleges the registrant, Virginia Urology, seeks to market its services in connection with the NCAA tournament, including previously adopting the mark VASECTOMY MADNESS to make explicit references to the NCAA Tournament to create an association between the registrant’s services and the tournament. The complaint includes previous website excerpts from Virginia Urology, making the connection between the 3-day vasectomy recovery time and the start of the NCAA tournament, which supposedly became a motivation for scheduling vasectomy surgery during the first week of the NCAA tournament. The NCAA also states it previously obtained rights in the term VASECTOMY MADNESS from Registrant and licensed use of the mark back to Virginia Urology, but the license has since expired.
In an effort to continue making the association between Virginia Urology’s services and the NCAA tournament, Virginia Urology filed and registered the mark VASECTOMY MAYHEM and make continued references to basketball or the NCAA Tournament without the NCAA’s permission. The complaint alleges that continued use of VASECTOMY MAYHEM by Virginia Urology is likely to result in confusion with NCAA or suggest Virginia Urology’s services are in some way legitimately connected with, sponsored, licensed, or approved by the NCAA. In addition to the potential for confusion or perceived affiliation with the NCAA, the complaint also alleges a claim for dilution due to the potential damage or harm caused by Virginia Urology’s continued use and registration of the VASECTOMY MAYHEM mark.
The NCAA makes two main claims; (1) there is a likelihood of confusion, or suggested affiliation or sponsorship, with the NCAA if Virginia Urology continues to use the VASECTOMY MAYHEM mark; and (2) dilution of the famous NCAA marks is likely to occur and there is a potential for harm to the NCAA reputation if Virginia Urology could continue using the mark. The likelihood of confusion claim is based on the potential for confusion or potential false association with the Virginia Urology and the NCAA. The NCAA claims Virginia Urology’s references to the NCAA tournament in its advertising and adoption of the mark VASECTOMY MAYHEM – MAYHEM is also used by the NCAA to promote its tournament – creates this false association and confusion.
Additionally, to make the dilution claim, the NCAA must first allege they own a famous mark. Famous marks are the most important marks in US trademark law and are entitled to the upmost protection under the Lanham Act. Under the Trademark Act, a famous mark is one that is widely recognized by the general consuming public of the United States as a designation of source of goods and services of the mark’s owner. The Act also provides the following factors to consider when assessing fame: (i) the duration, extent, and geographic reach of advertising and publicity of the mark; (ii) the amount, volume, and geographic extent of sales of goods and services offered under the mark; (iii) the extent of actual recognition of the mark; and (iv) whether the mark was registered on the principal register. The NCAA Tournament and the MARCH MADNESS marks are very widely known and likely meet the requisite standard for fame, especially given the growing popularity of legalized gambling in the United States.
The NCAA filed its case on February 4, 2021, and Virginia Urology has until March 16, 2021, to file an answer to the complaint. Given the previous relationship between the parties, there will likely be a settlement of claims or outright abandonment of the registration by Virginia Urology. Most cases instituted at the Trademark Trial and Appeal Board are settled before reaching the merits of the case, and we suspect this case will end no differently, barring an outright abandonment of rights by Virginia Urology. This could also be the most interesting tactic to renegotiate a license agreement. Thus, we will have to wait to get a final resolution of the matter, but it certainly serves as good fodder for sports and trademark lovers leading up to the NCAA tournament.
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