Posted on March 12, 2012 by David Silverman

MARCH MADNESS: An Unusual Case of Reverse Confusion

As we wrote about last year around this time, MARCH MADNESS is a term that is protected by trademark law.  It is owned by the March Madness Athletic Association (MMAA), a joint venture between the NCAA and the Illinois High School Athletic Association (IHSA).   The IHSA was actually first to begin using this mark to describe its high school basketball tournament in the 1940s. 

Brent Musburger brought MARCH MADNESS to public attention in using that term to describe the NCAA college basketball tournament, during which many hearts are broken each year....if you are lucky enough to have a team that made it this far. (Northwestern came this close to its first NCAA appearance.)

Normally, this would be a case of so-called "reverse confusion," in which the junior user of a mark (here, the NCAA) is so much bigger than the senior user of the mark (the IHSA) that the public thinks the mark belongs to the junior user.  In the typical reverse confusion case, the senior user can stop the junior user from using the mark.  But that did not happen here.  Why? 

In the typical reverse confusion case, the junior user adopts the senior user's mark and that can be stopped by the senior user.  But here, the public began using MARCH MADNESS to refer to the NCAA tournament before the NCAA began using the term itself.  The federal court that heard this trademark infringement action ruled that the IHSA could not stop the NCAA from using MARCH MADNESS because that term had entered the public domain as a nickname for the NCAA tournament before the NCAA adopted the mark itself.  Accordingly, the court held that the mark was subject to dual use by both NCAA and IHSA, who now own it jointly through the MMAA.

What does this mean for broadcasters?  It means your talent can discuss MARCH MADNESS all they like without fear of reprisal, so long as the term is not used to sell or promote goods or services.  The NCAA may not be as aggressive in protecting MARCH MADNESS as the NFL is in protecting SUPER BOWL, but the unauthorized commercial use of either term is prohibited by trademark law.  This means no "March Madness Sales" without authorization from the MMAA, which owns the trademark and related marketing rights to MARCH MADNESS.

 
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Posted on January 19, 2012 by David Silverman

Is Super Bowl Protected by Trademark or Copyright Law? Try Both.

One of the questions we commonly get from broadcasters and others around this time of year is whether and/or how they can use the term SUPER BOWL.  Some refer to it as a trademark while others call it a copyright.  Who is right...and how can it be used?  The term SUPER BOWL is a registered trademark owned by the National Football League. We previously discussed this issue in 2009, 2010 and 2011. 

Actually, the NFL owns at least eight trademark registrations containing the words SUPER BOWL, as well trademark registrations for the terms PRO BOWL and even SUPER SUNDAY.  Aside from these trademark registrations, the NFL also owns the copyright to the telecast of the game itself.  You may have heard that in past years, the NFL tried to stop Super Bowl parties shown on large TV screens.  This was an enforcement of the NFL's copyright in the game.  Now, the NFL apparently no longer tries to stop Super Bowl parties unless the proprietor charges admission to see the game.  Again, this is a copyright issue.  But what do these rights mean for a broadcaster who wants to run a Super Bowl promotion or an advertiser who wants to run a campaign involving the Big Game?

 

When it comes to use of the trademarked term SUPER BOWL, the NFL will take action against third party attempts to use that term in a commercial sense, in other words, to sell goods and services using the term SUPER BOWL in advertising.  This is because commercial sponsors pay the NFL to be the official car or soft drink or whatever of the SUPER BOWL.  Any unauthorized use of that term in advertising could imply a false sponsorship or affiliation with the NFL.

So, what is permitted?  It is fine to use the term SUPER BOWL in news stories about the game and in conversations about the game.  There is a trademark concept called "nominative fair use" that allows others to use a trademarked term when there is simply no better way to refer to it.  But that concept does not extend to commercial use of the term. 

In summary, you can discuss the Super Bowl and do news stories about the Super Bowl, all while referring to it as the Super Bowl.  But any commercials or promotional announcements should avoid use of that trademarked term.  It is OK for commercials to refer to it as the "Big Game" or any other term that does not include the words "Super Bowl" or "Super Sunday."

And go ahead and have that TV Super Bowl party you were planning.  You will not be violating any copyright enforced by the NFL so long as you do not charge admission to see the game.  By contrast, selling food and drink at the venue is permitted.  In fact, that is pretty much what every bar in the US will be doing on Super Sunday.
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Posted on November 28, 2010 by David Silverman

Looking for a New Positioning Statement, Slogan or Name for Your Station? - Consult a Trademark Attorney First

Many station owners think they can adopt any name, positioning statement or slogan for their station so long as no one else in the market is using the exact same name or slogan.  That thinking is often incorrect, and can be very costly if a name is adopted and has to be changed later because it infringes on someone else's intellectual property rights.  Nicknames and slogans used in station advertising or promotion are controlled by trademark law.  Even a station's call sign, which must be approved by the FCC, cannot be too similar to an in-market competitor's call sign without running afoul of trademark law.  You may have read about recent litigation concerning the station nicknames "Bob" and "Bob FM."  In that case, there is apparent contour overlap between two separately owned stations using the same name.  But trademark law can come into play even when stations are not in the same market and do not have overlapping contours.

Trademark rights can be established in one of two ways.  The first station to use a name or slogan can establish priority within that station's geographic market or contour.  Alternatively, one can file an application for registration of a station name or slogan at the US Patent and Trademark Office (the "PTO"), and thereby obtain nationwide rights in that name or slogan, if no one else had prior use or a prior application.  Since trademark applications can be filed on an intent-to-use basis, a station can establish priority for a mark it is not yet using.  This is why a trademark search is so important prior to using a mark. 

Determining whether a name or slogan is available for use requires a bit of research best done by a trademark attorney.  First, a "knockout" search of both the PTO database and the Internet may reveal whether anyone has nationwide rights to the term you want to use.  Even if no prior application has been filed at the PTO, widespread Internet usage might also serve to establish nationwide rights.   If that preliminary search reveals someone else's rights to the term you want, it may be easy to "knock out" that name as a possibility.  Perhaps you know of a competitor in the market using that same name or slogan, and if so, that should be a clear signal not to use it.

If the "knockout" search does not reveal any obvious problems, it may be wise to follow that up with a "full" or "comprehensive" search conducted by a trademark search firm.  Such a search may be useful, not only because it may turn up exact hits that were missed in the "knockout" search, but also because it may reveal similar marks that can be equally as troublesome.  Trademark infringement is based on "confusing similarity" of marks and services, and marks can be confusingly similar even if not identical.  For example, one federal court found that the call sign KISS infringed another station's use of KIIS.  Even though the FCC approved these different call signs for different stations, the court found that one infringed the other as a matter of trademark law since they were pronounced the same way over the radio.

The same principles that apply to station slogans and nicknames also apply to marks and slogans used in advertising produced by broadcasters for third parties.  We have written before about the dangers of using third party marks such as "Super Bowl" and "Olympics" without authorization.  But some third party marks are not quite as obvious.  One station prodcued a commercial using the phrase."Get ready to rumble," only to discover that this phrase was a registered mark belonging to a third party.  It is best not to assume that any name or slogan is available for use, even if you are unaware of any in-market use of the same--or similar--mark (unless, of course, the mark belongs to the client for whom you are producing the spot).  The best idea is to consult a trademark attorney before using any call sign, nickname or slogan for your station or before producing a spot for a station client.
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