In 2019, Virginia Urology Center, P.C. (“Registrant”) filed a trademark application at the U.S. Patent and Trademark Office (“PTO”) for VASECTOMY MAYHEM in connection with (Int’l. Class: 044) “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”. This mark became registered on September 01, 2020, Reg. No. 6,143,370. On February 4, 2021, the National Collegiate Athletic Association (“NCAA”) filed a Petition for Cancellation before the U.S. PTO’s Trademark and Appeal Board (“TTAB”) based on priority, likelihood of confusion, and dilution by blurring. In support of its Petition, the NCAA cited numerous of its trademark registrations for MARCH MAYHEM, MARCH MADNESS, and MUNCH MADNESS (the majority which have achieved “incontestable” status).
In its Petition, the NCAA alleged that Registrant adopted and used the mark VASECTOMY MADNESS to promote its medical services by “making explicit references to NCAA’s Tournament in order to associate Registrant and its services with NCAA and the Tournament.” Further, the NCAA alleged Registrant assigned its rights in VASECTOMY MADNESS to NCAA and that the NCAA licensed the mark to Registrant to use in a "proscribed manner for a limited period of time". Finally, the NCAA alleged that after the license expired, Registrant used and registered VASECTOMY MAYHEM to promote its medical services using basketball/NCAA references and imagery, in the same manner as it did with VASECTOMY MADNESS, without NCAA’s consent or permission. The NCAA alleged its marks have become “distinctive and famous in accordance with 15 U.S.C. § 1125(c).”