The focal point of a growing intellectual property dispute revolves around the resemblance between the National Collegiate Pickleball Association (NCPA) and the National Collegiate Athletic Association (NCAA).
Unifying Pickleabll And Collegiate Institutions
This concern has been raised by the NCAA with regard to the NCPA’s name, highlighting the commonality in their involvement with collegiate sports, as reported by the San Diego Union-Tribune.
Noah Suemnick, 22 years of age, established the NCPA in the wake of the pandemic after noting the surge in pickleball’s popularity.
The NCPA’s primary objective is to unify pickleball and collegiate institutions, offering resources to aid college athletes in their progression. The organization intends to conduct a tournament in San Diego, with participation from over 50 colleges, slated for broadcast on a prominent network.
No Formal Recognition
While pickleball hasn’t received formal recognition as a sport by the NCAA, the landscape could change in the future.
A significant number of colleges already have club pickleball teams, and participation in the sport surpasses that of established counterparts like softball and volleyball.
Moreover, pickleball has adopted professionalization in recent years, with entities such as Major League Pickleball and the Professional Pickleball Association, alongside other enterprises engaged in professional competitions.
The NCAA’s contention lies within trademark law, contending that NCPA’s name infringes on its rights, resulting in dilution and unfair competition.
NCAA Preference
Douglas Masters, the managing partner of Loeb & Loeb’s Chicago office and legal representation for the NCAA, asserts the NCAA’s preference for Suemnick to select an alternative name for the organization.
Suemnick disclosed to Sportico that the NCAA had requested not only a name change for the NCPA but also submitted written authorization to assume ownership of the name and associated mark.
In May, Suemnick, through legal representation, filed an application with the U.S. Patent and Trademark Office (USPTO) to register the “NATIONAL COLLEGIATE PICKLEBALL ASSOCIATION” for services related to sports training, organization of sports competitions and other sports-related offerings based on the intention to utilize the mark in the future.
Suemnick contends that the USPTO has previously registered marks bearing greater similarity to the NCAA, potentially leading to more pronounced confusion.
#NewProfilePic pic.twitter.com/53kzG9JVtM
— NCPA Pickleball (@ncpapickleball) August 8, 2023
Trademark Electronic Search System
A cursory examination of the Trademark Electronic Search System reveals active registrations for entities like the National College Players Association, the National Collegiate Esports Association, and the National Collegiate Performing Arts.
Additionally, there are sports organizations such as the National Collegiate Boxing Association and the National Collegiate Table Tennis Association, although they haven’t pursued USPTO registration.
Alexandra Roberts
Alexandra Roberts, a professor of law and media at Northeastern University School of Law and author of Athlete Trademarks: Names, Nicknames, & Catchphrases in the Oxford University Press’s Handbook of American Sports Law, explained to Sportico:
“It’s not too surprising that the NCAA sent a cease-and-desist letter rather than waiting to oppose the mark after publication,”
This is possibly due to the anticipated lengthy review process by a USPTO examining attorney.
She added, “That move gets [the NCAA] out in front of any decision from the USPTO, where if an examining attorney reviews the application and does not find a likelihood of confusion with other existing marks and Suemnick’s application passes through the publication, the NCAA is less well-positioned to bully the NCPA into changing its name.
“If the NCPA does decide to change its name, sooner is better than later.”
Skepticism
Roberts expressed skepticism regarding the NCAA’s legal standing:
“The most important question for infringement is whether the junior user’s use of its mark creates a likelihood of confusion among consumers that it’s associated or affiliated with NCAA or that the tournament is put on or sponsored by the NCAA.”
Regarding potential survey data from the NCAA demonstrating consumer association between NCPA or its tournament and the NCAA, she remarked that ” that evidence would go a long way toward bolstering [the NCAA’s] infringement claim.”
“Fairly Descriptive”
However, Roberts emphasized that both marks “seem fairly descriptive” and are likely “different enough for consumers to distinguish them easily.” She also pointed out that, to her knowledge, the NCAA doesn’t “use any ‘National Collegiate [name of sport] Association’” marks.
The NCAA’s demand letter also raised the concern of dilution by “blurring.” Blurring refers to a famous mark losing some of its distinctiveness if consumers associate it with another’s good or service.
Establishing Dilution
While the “NCAA” likely qualifies as famous, Roberts stressed that for the NCAA to establish dilution, Suemnick’s use of NCPA must be “so similar that it undermines the distinctiveness” of NCAA and causes consumers to associate NCAA with NCPA.
“I don’t think Suemnick’s pickleball mark is similar enough to dilute the NCAA’s mark,” she concluded.
