2. PROTECTING YOUR BRAND SCOTT BEARBY
Interim Vice President of Legal Affairs / General Counsel
The National Collegiate Athletic Association

3. PROTECTING YOUR BRAND DOUGLAS N. MASTERS
Partner and Co-Chair, Intellectual Property Protection Practice Group

4. A Basic Introduction To Trademark Licensing
PROTECTING YOUR BRAND
A Basic Introduction To Trademark Licensing

5. PROTECTING YOUR BRAND Goals for Today
Gain a basic understanding of trademark rights
Know when to seek a license
Know how to license your property

6. PROTECTING YOUR BRAND What is a Trademark?
Word, symbol, sound, etc. that designates source and quality of goods or services
Developed to promote commerce by protecting consumers (whereas copyrights developed to promote creativity by protecting their owners)

7. What Rights Does a Trademark Provide?
PROTECTING YOUR BRAND
What Rights Does a Trademark Provide?
Prevents unauthorized use of similar marks likely to cause confusion
Prevents the dilution of distinctiveness of famous marks
Compare copyrights, which prevents unauthorized copying, etc., irrespective of consumer confusion

8. PROTECTING YOUR BRAND What is a License?
Permission to use another’s “trademark” in certain circumstances
Way to un-bundle the rights
Grant only one right to one party
Grant multiple rights to one party
Grant multiple rights to multiple parties

9. PROTECTING YOUR BRAND Why License Your Mark?
Expansion of Core Business
Expansion of Product Lines
Merchandising
Promotion
Revenue

10. Why License Another’s Mark?
PROTECTING YOUR BRAND
Why License Another’s Mark?
Can’t sell product or service with the mark on it without obtaining license
Some right to resell existing products but not to create them
Often true even if owner doesn’t sell that product or service
Incorporating the mark will add value or salability to product or service
Combining your mark with another’s creates more profitable product or service

11. PROTECTING YOUR BRAND Keys To a Valid License Quality Control
Related Company
Use by Licensee is as though used by Licensor
Mark used properly

12. What are the Licensor’s Restrictions?
PROTECTING YOUR BRAND
What are the Licensor’s Restrictions?
Mark
Goods
Exclusivity
Channels
Transferability
Term
Territory
Control of IP
Representation
Warranties

13. In Exchange for What Kind of Payments?
PROTECTING YOUR BRAND
In Exchange for What Kind of Payments?
Flat fee
License fees per sale
Earned royalties
Minimums
Milestone payments

14. PROTECTING YOUR BRAND BRUCE B. SIEGAL, ESQ.
Senior Vice President and General Counsel
IMG College / The Collegiate Licensing Company (CLC)

15. The Collegiate Licensing Company
PROTECTING YOUR BRAND
The Collegiate Licensing Company
Protects and licenses a wide variety of Word Marks and Design Marks
No one may use the NCAA marks without the express written permission of the NCAA
Licensees produce product leading up to and during its 88 Championship Events and under its Blue Disk program
The NCAA approves all licensees, products, promotions and premiums
CLC assists the NCAA in administering its licensing program and in conducting trademark protection and enforcement actions

16. Colleges and Universities
PROTECTING YOUR BRAND
Colleges and Universities
Colleges and universities maintain licensing programs separate from NCAA licensing
Schools manage their programs through a licensing agent or independently
No one may use university marks without the express written permission of the university

17. Colleges and Universities
PROTECTING YOUR BRAND
Colleges and Universities
Licensees can acquire rights to use university marks in conjunction with NCAA Championships through CLC
Like the NCAA, colleges and universities vigorously protect and enforce their respective trademark rights

18. PROTECTING YOUR BRAND Conferences
School conferences also maintain trademark rights in their trademarks
Opportunities for conference licensing focus around conference championships
Licensees can acquire rights to use university marks in conjunction with conferences through the conferences or their agent

19. PROTECTING YOUR BRAND Bowl Games
Individual Bowl Games protect and license their marks often in connection with the marks of the participating teams
Retail focus of bowl licensing programs is the bowl concessionaire and other retailers near venue, including hotels, and the retailers near the campuses of the participating teams

20. Bowl Championship Series (BCS)
PROTECTING YOUR BRAND
Bowl Championship Series (BCS)
BCS Properties has the right to license the BCS mark and the marks of participating teams for BCS Games, including BCS Championship games

21. PROTECTING YOUR BRAND CINDY VAN MATRE Trademark Licensing Director
University of Wisconsin, Madison

22. PROTECTING YOUR BRAND The Three “P’s” of Licensing Protect Promote
Profit
The Three “P’s” Apply At All Levels,
No Matter the Size of Your Program

23. PROTECTING YOUR BRAND
PROTECT – Protecting an institution’s trademark interest and protecting the consumer from deception. This can be achieved by
Internal Campus Policy
License Agreement
Trademark Registrations for name, brand, logo or symbol that is used by and represents an organization or institution and distinguishes it from others.

24. Trademark Registrations
PROTECTING YOUR BRAND
Trademark Registrations
A TM is used to show that a mark has been registered in a state. A federal registration, identified with the ®, is stronger and provides nationwide protection. In order to use the ®, the mark must be registered with the United States Patent & Trademark Office (USPTO). ™

25. PROTECTING YOUR BRAND And you also PROTECT your brand by enforcement.

26. PROTECTING YOUR BRAND
PROMOTE – Promoting the institution’s brand to the public.
Update or create new logo
2002
2003

27. PROTECTING YOUR BRAND
PROMOTE – Promoting the institution’s brand to the public.
Find new products/licensees

28. PROTECTING YOUR BRAND
PROMOTE – Promoting the institution’s brand to the public.
Encourage retailers

29. PROTECTING YOUR BRAND
PROFIT – Generate royalties from sales of licensed merchandise and promotional rights fees.
Advance fees and royalty rates Apparel - $100; $250; $500; $750; $1, Non-apparel - $50; $125; $250; $ Royalty Rate – The percentage collected by a licensor for the use of its mark. Most institutions charge between 7.5% to 10%
Audit licensees
Promotions

30. Working with NCAA Trademarks
PROTECTING YOUR BRAND
Working with NCAA Trademarks
Using the trademark, its symbols and NCAA guidelines: NOTE: These general guidelines do not include merchandise designs. All product designs must be submitted through the NCAA’s licensing program administered by the Collegiate Licensing Company. Inquiries should be directed to the NCAA licensing staff. For information about the NCAA licensing program, please visit the Web page at
ALL uses of NCAA trademarks or logos must be submitted to the NCAA for approval.
For the most current list of NCAA licensed or owned trademarks, please visit
Downloads of NCAA logos may be obtained through the NCAA Digital Library.
The NCAA’s position on inclusion of ® and ™ marks is first and most prominent use

31. Working with NCAA Trademarks
PROTECTING YOUR BRAND
Working with NCAA Trademarks
The location of the trademark and how it is used is the primary factor in determining if a trademark symbol should be included in text. If the protected logo location is prominent and the primary focus on the page or product design, an ® or ™ in the text is not necessary. However, if the logo location is placed lower on the page or is secondary to the message being delivered, an ® or ™ in the text or header (first use only) should be inserted.
Official names cannot be changed or abbreviated unless specifically trademarked (Final 4, F4).
There may be no registration of or use of NCAA marks within Internet domain names unless advance approval from the NCAA is secured and ownership of the URL is maintained by the NCAA. Such use of NCAA marks in Internet directories is prohibited; however, members may use an NCAA mark within a member URL, provided such NCAA mark does not appear in the domain name portion of the URL. By way of example, members may use the following URL:

32. Working with NCAA Trademarks
PROTECTING YOUR BRAND
Working with NCAA Trademarks
NCAA trademarked protection language:
NCAA trademarks benefit from consistent “source identification” to the public through basic legal language attributing ownership.
The legal statement should be used on “printed” materials of all types for all NCAA trademarks, except where space limitations prevent legal language.
Printed items that display NCAA members logos.
The NCAA requires protection language as outlined below. This does not have to be prominently displayed language and is expected to be included as some form of “mouse print”.
NCAA is a trademark of the National Collegiate Athletic Association.
If you have questions, please contact Durenka Robie at or 317/

33. PROTECTING YOUR BRAND
Questions and Answers