Active defense by NCAA’s lawyers leads to trademark madness

The NCAA’s recent opposition to a trademark for “Vasectomy Mayhem” is the latest in a long history of active prosecution.

If you checked Sports Twitter on Tuesday, chances are you may have come across a popular tweet showing an excerpt from a legal document filed on behalf of the NCAA, describing the association’s opposition to a Virginia urology office registering a trademark for the phrase “VASECTOMY MAYHEM.”

In case you missed it, here’s the tweet in question:

It’s certainly a laughable headline that lends itself to all manner of clever wordplay; however, the second-most common reaction from the public — once the laughter subdued — was one of annoyance bordering on vitriol. Check the comments for plenty examples of both.

It’s understandable, too; on its face, the NCAA punching down on some small doctor’s office seems uncouth at best. Some paid special attention to the phrase “confusingly similar,” as used in the filing, such as this user:

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Now, most of what is shown in item 14 is just boilerplate language; that is, it was not specifically drafted for the urologists. (Sorry to ruin the fun.) But there’s certainly more to this story than just one screenshot in a tweet.

For a little background, in my life away from basketball, I currently work as a paralegal at an intellectual property law firm. (Note: I am not a lawyer, and nothing in this article should be construed as legal opinion or legal advice.) You don’t need to be a trademark lawyer to access the United States Patent and Trademark Office database for these types of proceedings, though. These documents are publicly available, but they are not the most easily digestible fare.

For the strong of spirit, here is a link to the official Petition for Cancellation, as filed with the USPTO on February 4, 2021. If you don’t feel like reading the whole thing, here’s a key excerpt from the Petition that was not included in the tweet that gained fame on Tuesday:

From USPTO Trademark Status and Document Retrieval service

For context, the “Registrant” referred to above is Virginia Urology, a urologist with a handful of locations in the greater Richmond area. What is important to note here is that there was existing relationship between Virginia Urology and the NCAA, where the NCAA owned the rights to the mark “VASECTOMY MADNESS” and charged the doctors’ office a licensing fee to use the phrase.

Where things really get interesting is what happened after the license agreement expired. As noted in item 11 above, “insistent on continuing to use the Tournament to market its services” — that is, drawing on the only-half-joking idea that men should intentionally schedule vasectomies before the NCAA Tournament in order to get an excused absence from work and chores — the doctors filed their own trademark registration application with the USPTO, this time for “VASECTOMY MAYHEM.”

Different enough, right? Well, no. Not even close, actually.

That’s because the NCAA has owned the rights to “MARCH MAYHEM” since 2013, in addition to the “MARCH MADNESS” mark it has owned since 1982. So, by trying to save a few bucks in licensing fees — OK, probably more than a few bucks — the doctors drew attention to themselves by trying to register their own trademark with a similar-but-different phrase.

But you’ve got to wake up pretty early in the morning to get one past Douglas Masters and the lawyers at Loeb & Loeb LLP. The Chicago lawyers are active on defense for the NCAA, staying vigilant to make sure no one is profiting off the Big Dance without express consent (or, more likely, paying licensing fees out the nose). This is just the latest — and objectively funniest — example of a long history of opposition to potential infringers. (Here’s a list for your perusing pleasure.)

At the end of the day, the NCAA is probably not being significantly affected by any one instance of infringement, but those instances can add up to significant losses if the association doesn’t defend itself. So, while we can laugh at the thought of someone confusing the Big Dance for the Big Snip, this filing isn’t really all that frivolous — especially when you consider the ethically shaky actions of the doctors that preceded it. Still, it made for a good mid-week chuckle ahead of the tournament.

Oh, and in case you were wondering, it’s no longer Vasectomy Mayhem. It’s Vasectomy Time.

Andy Dieckhoff
Andy Dieckhoff

Editor/Writer, Heat Check CBB
Creator, The DPI Gradebook