Does the National Collegiate Pickleball Association sound like it has something to do with the National Collegiate Athletic Association?
This question lies at the heart of an emerging intellectual property dispute between an organizer for a collegiate pickleball tournament scheduled for next March—the same month as the NCAA’s men’s and women’s college basketball tournaments—and the nation’s leading association for intercollegiate athletics.
As reported by the San Diego Union-Tribune, the NCAA has shared concerns with Noah Suemnick about the NCPA’s name given its similarity to “NCAA” and that both involve college sports.
Suemnick, 22, founded the NCPA following the pandemic as he saw pickleball’s popularity take off. The NCPA’s overarching goal is to “unite the sport of pickleball and colleges” and provide college athletes with “tools and resources” to help them advance. It plans to host its tournament in San Diego, with over 50 colleges participating and a live broadcast on a major network.
The NCAA hasn’t sanctioned pickleball as a sport, though that could change in the future. Numerous colleges have club pickleball teams, and more Americans play the sport than softball, volleyball and other established sports. Pickleball has also emerged professionally in recent years, with Major League Pickleball, the Professional Pickleball Association and other businesses involved with pro competitions.
The NCAA objects to the NCPA name under trademark law. It argues NCPA constitutes infringement, dilution and unfair competition. Douglas Masters, the managing partner of Loeb & Loeb’s Chicago office and an attorney for the NCAA, says the NCAA wants Suemnick to come up with a different name for the organization.
Suemnick told Sportico the NCAA has requested he change NCPA’s name and sign over in writing his rights to that name and accompanying mark. In May, Suemnick (through an attorney) applied to the U.S. Patent and Trademark Office to register “NATIONAL COLLEGIATE PICKLEBALL ASSOCIATION” for sports training services, arrangement of sports competition and other sports-related services based on an intent to use the mark in the future.
Suemnick maintains the USPTO has registered other marks that are more similar to NCAA and, arguably, more likely to cause more confusion.
A quick search on the Trademark Electronic Search System finds active registrations for the National College Players Association, the National Collegiate Esports Association, the National Collegiate Rugby, the National Collegiate Scouting Association and the National Collegiate Performing Arts. There are also sports organizations such as the National Collegiate Boxing Association and the National Collegiate Table Tennis Association, but they haven’t applied for USPTO registration.
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, told Sportico “it’s not too surprising that the NCAA sent a cease-and-desist letter rather than waiting to oppose the mark after publication,” since a USPTO examining attorney likely won’t complete a review for many months.
“That move,” Roberts explained, “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. And if the NCPA does decide to change its name, sooner is better than later.”
Roberts isn’t convinced the law is on the NCAA’s side.
She noted “the most important question for infringement is whether the junior user’s use of its mark”—here the National Collegiate Pickleball Association for its tournament and other services specified in the USPTO application—is whether that use “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.”
Roberts opined it’s “possible” consumers might assume the use of “National Collegiate ___ Association,” with a sport occupying that blank line, “could have something to do with NCAA, since it’s the governing body of college sports.”
If the NCAA produces survey data that consumers associate NCPA or its tournament with the NCAA, she said, “that evidence would go a long way toward bolstering [the NCAA’s] infringement claim.”
But Roberts stressed both marks “seem fairly descriptive” and both are probably “different enough for consumers to distinguish them easily.” She also noted that, as far as she knows, the NCAA doesn’t “use any ‘National Collegiate [name of sport] Association’” marks.
The NCAA’s demand letter also warned of dilution by blurring. That refers to a famous mark losing some of its distinctiveness if consumers associate it with another’s good or service. The “NCAA” likely counts as famous, but 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.
For now, Suemnick will continue to use NCPA.
