Mitchell Stabbe

Subscribe to Mitchell Stabbe's Posts

Mitchell Stabbe has over thirty years of experience in virtually all aspects of trademark law. Over the course of his career, Mitch has experienced numerous changes in trademark law and in technology, with the former often several steps behind the latter. Today, his practice focuses on the ever-evolving interplay between trademarks and the Internet. Over the last few years, for example, Mitch has regularly advised clients and provided comments to ICANN concerning the roll-out of hundreds of new generic top level domains (gTLDs) and the protections available to brand owners against cybersquatting and other domain name abuses.

Mitch also counsels clients on the availability and registration of trademarks and service marks and has prosecuted over a thousand applications before the US Patent and Trademark Office. He also is experienced in drafting and negotiating contracts, licenses, assignments and security interests involving intellectual property rights.

Mitch has litigated numerous trademark and copyright infringement and unfair competition civil actions in federal court, including actions against infringers and gray market importers, as well as adversary proceedings in federal court and before the Trademark Trial and Appeal Board (TTAB). In addition, he has successfully prosecuted over fifty claims under the Uniform Dispute Resolution Policy (UDRP) to compel the transfer of domain names registered in bad faith.

He has represented companies from a wide array of industries, including communications, media, publishing, technology, education, not-for-profit associations, real estate leasing, banking, and premium cigars.

Contact:Read more about Mitchell Stabbe

Yesterday, I wrote about the history of the NCAA’s assembling of the rights to an array of trademarks associated with this month’s basketball tournament.  Today, I will provide some examples of the activities that can bring unwanted NCAA attention to your operations.

Activities that May Result in a Demand Letter from the NCAA

The NCAA acknowledges that media entities can sell advertising that accompanies the entity’s coverage of the NCAA championships.  However, similar to my discussion earlier this year on the use of Super Bowl trademarks (see here) and my 2018 discussion on the use of Olympics trademarks (see here), unless authorized by the NCAA, any of the following activities may result in a cease and desist demand:

  • accepting advertising that refers to the NCAA, the NCAA Basketball Tournament, March Madness, The Big Dance, Final Four, Elite Eight or any other NCAA trademark or logo (The NCAA has posted a list of its trademarks here.)
    • Example: An ad from a retailer with the headline, “Buy A New Big Screen TV in Time to Watch March Madness.”
  • local programming that uses any NCAA trademark as part of its name
    • Example: A locally produced program previewing the tournament called “The Big Dance:  Pick a Winning Bracket.”
  • selling the right to sponsor the overall coverage by a broadcaster, website or print publication of the tournament
    • Example: During the sports segment of the local news, introducing the section of the report on tournament developments as “March Madness, brought to you by [name of advertiser].”
  • sweepstakes or giveaways that include any NCAA trademark in its name (see here)
    • Example: “The Final Four Giveaway.”
  • sweepstakes or giveaways that offer tickets to a tournament game as a prize
    • Example: even if the sweepstakes name is not a problem, offering game tickets as a prize will raise an objection by the NCAA.
  • events or parties that use any NCAA trademark to attract guests
    • Example: a radio station sponsors a happy hour where fans can watch a tournament game, with any NCAA marks and prominently placed on signage.
  • advertising that wishes or congratulates a team, or its coach or players, on success in the tournament
    • Example: “[Advertiser name] wishes [Name of Coach] and the 2020 [Name of Team] success in the NCAA tournament!”

There is one more common pitfall that is unique to the NCAA Basketball:  tournament brackets used in office pools where participants predict the winners of each game in advance of the tournament.  The NCAA’s position (see here) is that the unauthorized placement of advertising within an NCAA bracket or corporate sponsorship of a tournament bracket is misleading and constitutes an infringement of its intellectual property rights.  Accordingly, it says that any advertising should be outside of the bracket space and should clearly indicate that the advertiser or its goods or services are not sponsored by, approved by or otherwise associated with the NCAA or its championship tournament.
Continue Reading March Madness Trademarks:  Tips To Avoid A Foul Call from the NCAA (2021 Update – Part 2)

Part 1 of my 2020 annual update on the use of trademarks associated with the NCAA Basketball Tournament was published on the same day that the NCAA announced it was cancelling the tournament due to the pandemic.  Fortunately for all concerned (the players, fans, the NCAA and the broadcasters), it appears that the tournament will proceed as scheduled, with the first men’s games beginning on March 18 and the first women’s games beginning on March 21.  Accordingly, this discussion should hold greater interest than it did last year.

So, with the tournament about to begin, broadcasters, publishers and other businesses need to be wary about potential claims arising from their use of terms and logos associated with the tournament, including the well-known marks March Madness®, The Big Dance®, Final Four®, Women’s Final Four®, Elite Eight,® and The Road to the Final Four® (with and without the word “The”), each of which is a federally registered trademark.  The NCAA does not own “Sweet Sixteen – someone else does – but it does have federal registrations for NCAA Sweet Sixteen® and NCAA Sweet 16®.

The NCAA also has federal registrations for some lesser known marks, including March Mayhem®, March Is On®, Midnight Madness®, Selection Sunday®, 68 Teams, One Dream®, And Then There Were Four®, and NCAA Fast Break®.

Some of these marks are used to promote the basketball tournament or the coverage of the tournament, while others are used on merchandise, such as t-shirts.  The NCAA also uses (or licenses) variations on these marks without seeking registration, but it can claim common law rights in those marks, such as March Madness Live, March Madness Music Festival and Final Four Fan Fest.
Continue Reading March Madness Trademarks: Tips To Avoid A Foul Call from the NCAA (2021 Update – Part 1)

For the last five years, I have posted guidelines about engaging in or accepting advertising or promotions that directly or indirectly reference the Super Bowl without a license from the NFL.  As hard as it may be to believe, the NFL has almost made its way this season to another championship game, so here is an updated version of my prior posts.

The Super Bowl means big bucks.  It is estimated that each of the three television networks that broadcasts the Super Bowl pays the NFL over $1 billion per year for the right to broadcast NFL games through 2022, including the right to broadcast the big game on a rotating basis once every three years.  The investment seems to pay off for the networks.  Reportedly, it cost $5.6 M for a 30-second spot during last year’s Super Bowl broadcast and national advertising revenue totaled $448.7 M, not counting income from ads during any pre-game or post-game programming.  (In addition to the sums paid to have their commercials aired, some advertisers spend millions of dollars to produce an ad.)  In addition, the NFL receives hundreds of millions of dollars from licensing the use of the SUPER BOWL trademark and logo.

Given the value of the Super Bowl franchise, it is not surprising that the NFL is extremely aggressive in protecting its golden goose from anything it views as unauthorized efforts to trade off the goodwill associated with the mark or the game.  Accordingly, with the coin toss almost upon us, advertisers should take special care before publishing or engaging in advertising or other promotional activities that refer to the Super Bowl.  Broadcasters and news publishers have greater latitude than other businesses, but still need to be wary of engaging in activities that the NFL may view as trademark or copyright infringement.  (These risks also apply to other named sporting events, for example, making use of the terms “Final Four” or “March Madness” in connection with the annual NCAA Basketball Tournament.)
Continue Reading Stay A Lot More Than Six Feet From The NFL’s Trademarks!  2021 Update on Super Bowl Advertising and Promotions

While the NCAA has called off March Madness, promotions may still be continuing, and we certainly hope that the tournament will be back again next year.  So we figured that, as this article was already written, we might as well publish it.  Yesterday, we wrote about the history of the NCAA’s assembling of the rights to an array of trademarks associated with this month’s basketball tournament.  Today, we’ll provide some examples of the activities that bring unwanted NCAA attention to your operations.
Continue Reading March Madness Trademarks:  Avoiding a Foul Call from the NCAA (2020 Update)(Part 2 – Even if the Tournament is Off)

With the NCAA Basketball Tournament about to begin (though without an audience at the games), broadcasters, publishers and other businesses need to be wary about potential claims arising from their use of terms and logos associated with the tournament, including the well-known marks March Madness®, The Big Dance®, Final Four®, Women’s Final Four®, Elite Eight,® and The Road to the Final Four® (with and without the word “The”), each of which is a federally registered trademark.  The NCAA does not own “Sweet Sixteen – someone else does – but it does have federal registrations for NCAA Sweet Sixteen® and NCAA Sweet 16®.

The NCAA also has federal registrations for some lesser known marks, including March Mayhem®, March Is On®, Midnight Madness®, Selection Sunday®, 68 Teams, One Dream®, And Then There Were Four®, and NCAA Fast Break®.  The NCAA has a pending application to register March to the Madness as well.

Some of these marks are used to promote the basketball tournament or the coverage of the tournament, while others are used on merchandise, such as t-shirts.  The NCAA also uses (or licenses) variations on these marks without seeking registration, but it can claim common law rights in those marks, e.g., March Madness Live, March Madness Music Festival and Final Four Fan Fest.

Although the NCAA may use the federal registration symbol (®) with any of its federally registered marks, it is not obligated to do so.  Thus, it should not be assumed that the lack of the symbol means that the NCAA is not claiming trademark rights.
Continue Reading March Madness Trademarks: Avoiding a Foul Call from the NCAA (2020 Update – Part 1)

For several years, I have posted guidelines about engaging in or accepting advertising or promotions that directly or indirectly reference the Super Bowl without a license from the NFL (see, e.g. our articles here and here).  It’s that time of year again, so here is an updated version of my prior posts.

The Super Bowl means big bucks.  It is estimated that each of the three television networks that broadcasts the Super Bowl pays the NFL over $1 billion per year for the right to broadcast NFL games through 2022, including the right to broadcast the big game on a rotating basis once every three years.  The investment seems to pay off for the networks.  The Super Bowl broadcast alone generates hundreds of millions of dollars for the networks from advertisers.  In addition to the sums paid to have their commercials aired (reported to be approximately $5.6 million for a 30-second spot), many advertisers spend more than $1 million to produce each ad.  In addition, the NFL receives hundreds of millions of dollars from licensing the use of the SUPER BOWL trademark and logo.

Given the value of the Super Bowl franchise, it is not surprising that the NFL is extremely aggressive in protecting its golden goose from anything it views as unauthorized efforts to trade off the goodwill associated with the game.  Accordingly, with the coin toss almost upon us, advertisers must take special care before publishing ads or engaging in promotional activities that refer to the Super Bowl.  Broadcasters and news publishers have greater latitude than other businesses, but still need to be wary of engaging in activities that the NFL may view as trademark or copyright infringement.  (These risks also apply to other named sporting events, for example, making use of the terms “Final Four” or “March Madness” in connection with the upcoming NCAA Basketball Tournament – see, for instance, our articles here and here.)
Continue Reading “Come See Us At The Superb Owl” – Don’t Try This At Home!  2020 Update on Super Bowl Advertising and Promotions

Alternate Title: March Madness Trademarks: It’s March Spring and You Do Not Want to Make the NCAA Mad Angry at You

As we have previously reported, the National Collegiate Athletic Association (NCAA) is very serious about taking action against anyone who may try to trade off the goodwill in its March Madness marks — even if the NCAA’s actual marks are not used. For example:

  • Readers may recall that the NCAA filed a trademark infringement action in 2017 against a company that ran online sports-themed promotions and sweepstakes under the marks “April Madness” and “Final 3.” The defendant stipulated to an order providing that it would cease using those marks at least until the end of the year, but the order did not provide for dismissal of the case. The defendant failed to file an answer to the complaint and the NCAA was granted a default judgment, after which it filed a motion requesting an award of attorneys’ fees against the defendant in the amount of $242,213.55. In May 2018, the Court awarded attorneys’ fees in the amount of $220,998.05.
  • The NCAA sued a car dealership that had registered and was using the mark “Markdown Madness” in advertising. (The case was settled.)
  • Even schools that are part of the NCAA are not immune from claims of infringement. Seven years after the Big Ten Conference started using the mark “March Is On!,” the NCAA opposed an application to have that mark federally registered. (Ultimately, the opposition was withdrawn, the mark was registered, but the registration was assigned to the NCAA.)

These actions illustrate the level of importance that the NCAA places on acting against the use of trademarks which seek to create an association with its annual Collegiate Basketball Tournament. Clearly, such activities continue to carry great risks. Accordingly, following is an updated version of our prior blog posts on this subject.

🏀        🏀        🏀

With the NCAA Basketball Tournament about to begin, broadcasters, publishers and other businesses need to be wary about potential claims arising from their use terms and logos associated with the tournament, including March Madness®, The Big Dance®, Final Four® or Elite Eight,® each of which is a federally registered trademark. March Mayhem® is also registered to the NCAA, which is currently seeking to register March to the Madness.

The NCAA Aggressively Defends Against Unauthorized Use of its Trademarks

The NCAA states that $844.3M of its annual revenues derives from the licensing of television and marketing rights in the Division I Men’s Basketball Tournament. Moreover, its returns from the tournament have historically grown each year. Most of this income comes from broadcast licensing fees. It also has a substantial amount of revenue from licensing March Madness® and its other marks for use by advertisers. As part of those licenses, the NCAA agrees to stop non-authorized parties from using any of the marks. Indeed, if the NCAA did not actively police the use of its marks by unauthorized companies, advertisers might not feel the need to get a license or, at least, to pay as much as they do for the license. Thus, the NCAA has a strong incentive to put on a full court press to prevent non-licensees from associating their goods and services with the NCAA tournament through unauthorized use of its trademarks.
Continue Reading March Madness: Nothing but Net for Trademark Infringement Claims

For several years, we have posted guidelines about engaging in or accepting advertising or promotions that directly or indirectly allude to the Super Bowl without a license from the NFL. It’s that time of year again, so here is an updated version of our prior posts.

The Super Bowl means big bucks. It is estimated that each of the three television networks that broadcasts the Super Bowl pays the NFL over $1 billion per year for the right to broadcast NFL games through 2022, including the right to broadcast the big game on a rotating basis once every three years. The investment seems to pay off for the networks. The Super Bowl broadcast alone generates hundreds of millions of dollars for the networks from advertisers. In addition to the sums paid to have their commercials aired (reported to be approximately $5 million for a 30-second spot), many advertisers spend more than $1 million to produce each ad. In addition, the NFL receives hundreds of millions of dollars from licensing the use of the SUPER BOWL trademark and logo.

Given the value of the Super Bowl franchise, it is not surprising that the NFL is extremely aggressive in protecting its golden goose from anything it views as unauthorized efforts to trade off the goodwill associated with the game. Accordingly, with the coin toss almost upon us, advertisers must take special care before publishing ads or engaging in promotional activities that refer to the Super Bowl. Broadcasters and news publishers have greater latitude than other businesses, but still need to be wary of engaging in activities that the NFL may view as trademark or copyright infringement. (These risks also apply to other named sporting events, for example, making use of the terms “Final Four” or “March Madness” in connection with the upcoming NCAA Basketball Tournament.)
Continue Reading As Super Bowl Approaches, Advertisers Should Be Aware of The NFL’s Efforts to Protect Its Golden Goose – 2019 Update on Super Bowl Advertising and Promotions

It was almost exactly one year ago that we reported that the National Collegiate Athletic Association filed a trademark infringement action in federal court against a company that ran online sports-themed promotions and sweepstakes under the marks “April Madness” and “Final 3.”  The NCAA prevailed because the defendant entered into an agreement not to use the marks, but failed to file an answer to the complaint.  A default judgment was entered.  On February 23, 2018, the NCAA filed a motion requesting an an award of attorneys’ fees against the defendant in the amount of $242,213.55.

The amount of attorneys’ fees incurred in a case that was resolved with relatively little resistance illustrates the level of importance that the NCAA places on taking action against activities that “play off” the NCAA Collegiate Basketball Playoffs.  Clearly, such activities continue to carry great risks.  Accordingly, following is an updated version of last year’s blog post on this subject.

With the NCAA Basketball Tournament about to begin, broadcasters, publishers and other businesses need to be wary about potential claims arising from their use terms and logos associated with the tournament, including March Madness®, The Big Dance®, Final Four® or Elite Eight,® each of which is a federally registered trademark.
Continue Reading Solve for “X”:  NFL is to Super Bowl® as USOC is to Olympics® as NCAA is to X® (There Is More Than One Correct Answer!) – Trademarks and March Madness

Last month, we posted some updated guidelines about engaging in or accepting advertising or promotions that directly or indirectly allude to the Super Bowl without a license from the NFL.  “As Super Bowl Approaches, Advertisers Should Be Aware of The NFL’s Efforts to Protect Its Golden Goose – 2018 Update”  Now, that is behind us (for another year), it is just in time to think about these issues in the context of the Winter Olympics!

The guidance from last month’s blog addressed the following subjects:

  • Advertising that refers to the Super Bowl or other NFL trademarks;
  • Advertising that uses non-trademarked terms that will be understood by the public to refer to the Super Bowl;
  • Conducting or sponsoring events and parties for viewing the Super Bowl;
  • Sweepstakes or giveaways that use “Super Bowl” as part of its name or offer prizes that include game tickets;
  • Offering “special” coverage relating to the Super Bowl, accompanied by advertising;
  • Congratulatory advertising; and
  • Whether disclaimers will provide a defense to a claim.

The concepts advanced in that discussion apply equally to the Olympics, but the US Olympic Committee has a unique weapon in its arsenal, so there are additional considerations of which you should take note.
Continue Reading The Super Bowl is Over – Let’s Talk About the Olympics and Trademarks