The N.C.A.A. has filed a complaint against a urology practice in Virginia that trademarked the phrase “Vasectomy Mayhem,” which the athletic association said was “confusingly similar” to March Madness, its basketball tournament brand.
The college athletic association accused the practice, Virginia Urology in Richmond, Va., of trying to affiliate its brand with the popular March Madness tournaments, according to a complaint filed to the U.S. Patent and Trademark Office’s appeal board.
In its complaint, the N.C.A.A. said its concerns were the “likelihood of confusion” and “dilution by blurring” of its brand. The complaint was filed last month, but gained national attention from news outlets like NBC this week, ahead of the men’s college basketball tournament. The N.C.A.A. and Virginia Urology also disputed a “Vasectomy Madness” trademark in 2016.
“The N.C.A.A. objects to other businesses associating themselves with their tournament when they are not one of our corporate champions or partners,” Douglas Masters, the Chicago-based lawyer representing the N.C.A.A., said in an interview.


“We want the public to understand that those who market themselves in connection with the tournament are businesses who support the mission of the N.C.A.A. and the athletes that it serves,” he added.


The petition stated that the N.C.A.A. “believes it has been and will continue to be damaged by the registration for the mark ‘Vasectomy Mayhem.’”
The urology practice defended its trademark, saying in a statement that while it could not comment “on the specifics of a legal issue,” it believed that the trademark was not a source of confusion.
The March Madness brand became associated with the N.C.A.A. in the early 1980s, Mr. Masters said. This year, the men’s tournament of 68 teams returns on Thursday, with the final four games scheduled for April 3 and April 5 in Indiana. The women’s tournament of 64 teams will begin in San Antonio on March 21.


The association also has marketing rights over March Madness and other iterations including March Mayhem and Midnight Madness, Mr. Masters said.
The N.C.A.A.’s petition cited various ads used by the urology firm that suggest that the men’s college basketball tournament was a good time to get a vasectomy so that patients can watch the games as they recover from the procedure, which cuts and seals the tubes that carry sperm and blocks the transfer of sperm to the ejaculate.
In one ad, a urologist dribbles a basketball and says: “Hey guys, looking for a reason to sit on the couch and watch the games this weekend? We can help with that.” A pregnant doctor appears, grabs the basketball, and says: “And your wife will totally be on board with it. We promise.”
The patent office granted the medical practice the use of “Vasectomy Mayhem” on Sept. 1.
In its statement, Virginia Urology said that it believed that its trademark was “properly registered.”
“We’re a physician practice and don’t think anyone has confused our vasectomy services with any other organization,” the statement said. “We are disappointed with this costly and unnecessary legal challenge, but our focus remains on caring for our patients and community.”
Mr. Masters said the N.C.A.A. was waiting for the appeal board to respond to its complaint. A decision may arrive next week.
“Every late February and starting in March, there are these folks that try to benefit from the notoriety of March Madness and this is an example,” said Robert Thornburg, a patent lawyer at Allen, Dyer, Doppelt and Gilchrist, a Florida trademark and patent firm.


Mr. Thornburg, who is not involved in the dispute, said that the N.C.A.A. had a case with its complaint, and a track record of success. The association “does a phenomenal job of putting people on notice,” he said. “They are very good at brand protection.”
The dispute is similar to the first time that the N.C.A.A. challenged the medical practice. In 2016, the N.C.A.A. complained that the urology firm used “Vasectomy Madness” in basketball-themed advertising. Mr. Masters said the case was settled with the rights assigned to the N.C.A.A. At the time, the practice advertised a website that used the phrase and led to the firm’s website.

Source: New York Times

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