PROTECTING YOUR BRAND SCOTT BEARBY Interim Vice President

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

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

PROTECTING YOUR BRAND A Basic Introduction To Trademark Licensing

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

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)

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

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 multiple parties

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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.

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). ™ ®

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

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

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

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

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, 000 Nonapparel - $50; $125; $250; $500 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

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 www. ncaa. org. • 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 www. ncaa. org • Downloads of NCAA logos may be obtained through the NCAA Digital Library. www. ncaalogolibrary. org • The NCAA’s position on inclusion of ® and ™ marks is first and most prominent use

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, F 4). • 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: www. memberx. edu/ncaa.

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 drobie@ncaa. org or 317/917 -6825

PROTECTING YOUR BRAND Questions and Answers