Written by: Susan Neuberger Weller

It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.” Brackets are being completed, college jerseys are being pulled out of mothballs, bars and restaurants are hiring extra help, and work schedules are being rearranged around televised game times so everyone can join in the fun and relive the glory days. And, just as with the frenzy surrounding the Super Bowl, there will be events of all types organized around the country to take part in the “madness.” However, as we warned you in January right before the Super Bowl, if you are planning such events, do not use “March Madness” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales unless you want the NCAA to pay you an unwanted visit.

As is SUPER BOWL, the phrase MARCH MADNESS is a federally registered trademark owned by the NCAA for use in connection with products and services related to the college basketball tournament. This gives the NCAA exclusive nationwide rights to use the term on and in connection with these goods and services and prohibits anyone else from using the term in any way that would suggest any type of association, affiliation, sponsorship, endorsement, licensed status or any other connection between it and the NCAA, when in fact no such status exists. The NCAA takes this very seriously, as do its official licensed partners, who pay millions of dollars to use MARCH MADNESS in connection with their commercial promotions.

Although the NCAA was not the originator of the “March Madness” slogan, and negotiated for a number of years to acquire the federal rights to this mark, its rights are now firmly entrenched. Moreover, it is very aggressive in pursuing unauthorized uses of MARCH MADNESS or infringing versions of this mark not only to protect its own trademark rights, but to protect the rights of its licensed sponsors.

So, feel free to show your team spirit, cheer on your alma mater at the top of your lungs, wear that old jersey, and join in all the revelry, but do not engage in any advertising or promotional activity for any products or services using MARCH MADNESS or any altered version of the mark unless you have a paid sponsorship to do so.

 

 

Written by: Kevin J. Walsh and Eric R. Blythe

The Bankruptcy Code generally permits intellectual property licensees to continue using licensed property despite a licensor’s bankruptcy filing. However, because the “intellectual property” definition in the Bankruptcy Code does not include “trademarks,” courts have varied on whether trademark licensees receive similar protection. A New Jersey bankruptcy court recently grappled with this issue, concluding that trademark licensees may retain their trademark rights. The court further concluded that such protections remain intact despite a section 363 “free and clear” sale to a third-party.  To read more about this case,  please access the full version of this Bankruptcy Advisory prepared by the Mintz Levin Bankruptcy Practice.

 

Written by Geri Haight

Our colleagues in the Bankruptcy Section published a client advisory on a recent decision that has important implications for the bankruptcy rights of trademark licensees (and licensees of other forms of intellectual property).  In Sunbeam Products, Inc. v. Chicago American Mfg., LLC, the Seventh Circuit examined whether the rights of a trademark licensee whose licensor rejected the license agreement in bankruptcy could continue to use the licensed trademark.  In its decision, the Seventh Circuit determined that a trademark licensee has comparable protections afforded to licensees of other forms of intellectual property under Section 365(n) of the Bankruptcy Code.   

For our prior musings on trademarks and bankruptcy, please click here and here.    

 

Written by Geri Haight and Susan Weller

With the announcement today that the Swedish automaker Saab has filed for bankruptcy, we thought it timely to take a look at what happens to trademarks in the context of a bankruptcy proceeding.  SAAB is the owner of nearly 100 U.S. trademark registrations (for SAAB, ECOPOWER, BIOHYBRID, 9-3, among others). Since trademarks are often one of the most valuable assets a company may own, their disposition in a bankruptcy proceeding is of paramount importance.  So, what is to become of the SAAB trademarks?

The Lanham Act does not discuss the issue of bankruptcy. Trademarks are also excluded from specific mention in the U.S. Bankruptcy Code. But there is no question that trademarks, and trademark licenses and related agreements, are considered property of a bankrupt estate subject to the control and jurisdiction of the bankruptcy court. Continue Reading The Future of the SAAB Trademarks: Trademarks in Bankruptcy

Written by Susan Neuberger Weller

The Washington Post recently published an interesting article showing how opportunistic entrepreneurs and various branches of the U.S. military have collaborated to create a $50 million market for goods branded with various US military insignia and trademarks. When I read articles of this type, it always reminds me that the possibility of creating a multi-million dollar empire through the creative and carefully managed use of trademarks – whether your own or licensed from a third party – is endless. That individuals and established companies can profit  from trademarks owned by the U.S Army, Navy, Air Force and Marines in a down economy with expected sales this year of $50 million is a tribute not only to pride in our country but to the innovation, creativity, and opportunity it fosters.

Although a multi-million dollar business venture is the ideal, even small companies can, with some ingenuity and solid business sense, profit from exploiting their own or licensed third party trademarks. The key is to think outside the box and discover the unimagined or maybe just the overlooked, the solution to an everyday annoyance or the logical or perhaps unique expansion idea for an established third party brand.

Whatever road you wander down, always be sure your mark is available for your proposed use through a thorough and formal trademark search and then obtain a federal registration for your mark. If you are looking to license a third party’s mark, ensure that the mark is free and clear for your proposed use,  since your new idea for the mark may not already be covered in the third party’s trademark portfolio.  To read more about trademark adoption, clearance and registration, click here.

“Discovery consists of seeing what everybody has seen and thinking what nobody has thought.” — Albert von Szent-Gyorgy.   Marine Corps “Devil Dog” cologne to smell like a Marine….need I say more?