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XOOKER, LLC,
A Kentucky Limited Liability Company, Civil Action No. _________________
Defendant.
Plaintiff, Xooker, LLC (“Xooker”), through counsel, for its Verified Complaint For
Declaratory Relief against Defendant, the National Collegiate Athletic Association (“NCAA”),
1. Plaintiff Xooker is a limited liability company organized and existing under the
laws of the Commonwealth of Kentucky, with its principal place of business in Lexington,
Fayette County, Kentucky. Xooker has nineteen (19) Members, all of whom are individuals.
The citizenships of these Members are in Kentucky, Iowa, Illinois and New York. Xooker
3. This Court has jurisdiction over this action because Plaintiff seeks Declaratory
Judgments of this Court regarding the proper application of certain federal statutes related to
trademark infringement and unfair competition, including 15 U.S.C. §§ 1114 and 1125(a).
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4. This Court also has jurisdiction over this action pursuant to 28 U.S.C. §1332 in
that the amount in controversy is in excess of $75,000 exclusive of interest and costs and the
matter and action is between citizens of different states. This Court also has subject matter
jurisdiction over this action pursuant to 28 U.S.C. §2201(a) which statutory provision provides
the Court with jurisdiction to render a binding declaration of rights with respect to the actual and
justiciable controversy existing between the parties concerning the matters in dispute between
them.
substantial part of the events and omissions giving rise to this action and a substantial part of the
6. On April 5, 2017, Xooker filed U.S. Registration Application Ser. No. 87/399,547
for the mark “BASKETBALL MADNESS” (the “Xooker Mark”) to identify “downloadable
electronic games via wireless devices” in International Class 009 (the ‘“547 Application”). A
7. On June 27, 2017, the U.S. Patent and Trademark Office (“USPTO”) issued an
Office Action in the ‘547 Application, wherein the Examining Attorney (John Salcido) of the
USPTO “found no conflicting marks that would bar registration under Trademark Act Section
2(d).” A copy of the Office Action dated June 27, 2017, is attached as Exhibit B.
8. In the same Office Action, the Examining Attorney did refuse registration of the
‘547 Application based upon two formal issues that Xooker addressed in a response filed with
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9. Subsequently, on January 24, 2018, the USPTO issued a Notice of Publication for
the ‘547 Application, wherein it stated “[t]he mark of the application identified appears to be
entitled to registration” and the ‘547 Application officially published on February 13, 2018. A
10. After the publication of the mark, any person who believes they would be
damaged by the registration of the mark has thirty (30) days to oppose the registration by filing a
Notice of Opposition with the USPTO pursuant to its rules and regulations. 15 U.S.C. § 1063(a).
12. On March 1, 2018, counsel for the NCAA sent trademark counsel for Xooker a
cease and desist letter titled “Infringement of the NCAA’s Intellectual Property Rights,” wherein
the NCAA alleged Xooker’s use of the BASKETBALL MADNESS mark and attempt to register
the ‘547 Application “constitute[s] trademark infringement and unfair competition under federal
law as well as unfair competition and deceptive trade practices under state and common law.” A
copy of the cease and desist letter of March 1, 2018, is attached as Exhibit D.
13. After filing an extension of time to oppose the ‘547 Application for good cause,
the NCAA filed a Notice of Opposition on June 12, 2018. A copy of the Notice of Opposition is
attached as Exhibit E.
14. The NCAA opposes the Xooker Mark on the grounds of priority and likelihood of
confusion between the Xooker Mark and eight NCAA registrations for the mark MARCH
MADNESS. See NCAA Exhibit E, ¶ 3. See also NCAA Notice of Opposition Trademark Trial
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15. Specifically, the NCAA claims that the Xooker Mark, to be utilized in
conjunction with Xooker’s downloadable games via wireless devices, is likely to cause
namely shirts, sweatshirts, [shorts, ] and hats.” See id., pp. 2-3.
teams; namely, tee shirts, sweatshirts, sweat pants, caps, sweaters and
game software and related instructional manuals and guides sold as a unit
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images, audio, video and information via local and long distance
web casting of athletic games, tournaments, exhibitions, and events via the
Internet … providing sports information via the Internet.” See id., pp. 3-4.
16. Although the NCAA indicated in the Notice of Opposition that Registration
3,025,527 is used to identify “computer game software and related instructional manuals and
guides sold as a unit,” the NCAA’s Renewal of Registration for that registration filed on
December 11, 2015, “permanently deleted” the computer game software class of goods from the
‘527 Registration, which upon information and belief, is likely the result of the Ninth Circuit’s
decision in O’Bannon v. NCAA, 802 F.3d 1049 (9th Cir. 2015) related to a challenge of the
NCAA’s use of the images of its former student-athletes for commercial purposes.
through the Xooker application downloaded by users onto cell phones and other such wireless
devices. It is a basketball game much like the myriad other game applications available for
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download, such as Angry Birds, Pokemon GO and Wordscapes, to name but a few; however, the
BASKETBALL MADNESS game is not directly downloaded – it is part of the Xooker app. In
the BASKETBALL MADNESS game, the goal is to score as many baskets as possible. Players
can achieve increasingly higher levels by scoring the requisite points within the allotted time.
Players can earn prizes to be used in the application, and can earn discounts redeemable at stores
and restaurants, but no real money is at stake, and this is not a game wherein players can
19. Upon information and belief, the NCAA does not utilize MARCH MADNESS on
15 U.S.C.§ 1114(1).
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The NCAA’s passing reference to state law in the cease and desist letter (Exhibit D) is not addressed in this
Complaint. However, should it subsequently appear that the NCAA alleges violations by Xooker of other
federal statutes, state statutes or state common law, Xooker will seek leave to amend this Complaint
accordingly.
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(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which--
15 U.S.C. § 1125(a).
MADNESS mark and the NCAA’s MARCH MADNESS marks. Registration and use of the
Xooker Mark does not infringe on the NCAA’s MARCH MADNESS marks.
23. One basis for the NCAA’s objection to the Xooker Mark is that BASKETBALL
24. The NCAA mark is composed of both the words “Madness” and “March.” There
are around three hundred active trademark registrations and trademark registration applications
on the federal register for marks that use the term “Madness.”
25. For example, the Missouri Valley Conference, Inc. owns two federal registrations
for the mark ARCH MADNESS. Registration No. 2,008,658 for ARCH MADNESS to identify
“clothing, namely T-shirts, rugby shirts, polo shirts, sweatshirts, caps, hats, visors, sweaters,
vests, jogging suits, shorts, wind breakers, bandannas, ties and scarves” and Registration No.
5,213,100 for ARCH MADNESS used in association with “entertainment services, namely,
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arranging and conducting of competitions in the field of college basketball regular-season and
tournament games.”
26. The federal registrations for the ARCH MADNESS marks are far more similar to
28. The goods and services identified by BASKETBALL MADNESS are not related
29. None of the MARCH MADNESS registrations listed by the NCAA in its Notice
of Opposition are for use in “downloadable electronic games via wireless devices,” which is the
only good identified in the 547 Application for the Xooker Mark.
30. The NCAA’s MARCH MADNESS marks are for goods, such as merchandise
(cups, shirts, hats, basketballs, nets, towels, soft drinks and the like), and services relating to
31. When, as here, the goods and services identified by “competing” marks are
“totally unrelated,” the Sixth Circuit has determined that “confusion is unlikely.” See
Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1108 (6th Cir. 1991)
(citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979)).
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32. The Xooker Mark as used in the BASKETBALL MADNESS game prominently
33. The Xooker house mark is likewise prominently displayed during play of the
game itself.
34. Xooker’s website includes the Xooker Mark, further ensuring that the Xooker
Mark is affiliated solely with Xooker along with other Xooker games that can accessed through
the app, and does not prominently feature the BASKETBALL MADNESS game:
between goods and services provided by the NCAA using the MARCH MADNESS mark and
the goods and services provided by Xooker using the Xooker Mark. The Xooker Mark does not
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infringe on the NCAA’s mark, and Xooker is not unfairly competing with the NCAA through its
36. The NCAA has nevertheless demanded that Xooker cease all use of the Xooker
mark and filed the Notice of Opposition with the USPTO, and Xooker therefore seeks a
declaration of this Court that its use of the Xooker Mark is permissible and not contrary to 15
COUNT I
(Declaratory Judgment –
Xooker’s Use Of The Xooker Mark Does Not Violate 15 U.S.C. § 1114)
37. Plaintiff repeats and realleges each and every allegation set forth in Paragraphs 1
through 36 of this Verified Complaint For Declaratory Relief as if fully set forth herein.
38. The NCAA seeks to eliminate use and block registration of the Xooker Mark
because its use would allegedly infringe on the NCAA’s own registered MARCH MADNESS
marks.
39. 15 U.S.C. § 1114 prohibits the “use in commerce [of] any reproduction,
counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering
for sale, distribution, or advertising of any goods or services on or in connection with which such
40. Xooker’s electronic game identified by the Xooker Mark and which is
downloadable to wireless devices is not a good or service similar in any respect to the goods and
services that bear the NCAA’s MARCH MADNESS marks. The appearance of the marks is
likewise dissimilar, and the Xooker name is prominently displayed alongside the Xooker Mark
on the game and on the Xooker website, when it appears on the website.
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distinction between goods and services provided by the NCAA using the MARCH MADNESS
marks and goods and services provided by Xooker using the Xooker Mark.
42. The USPTO expert Examining Attorney came to the same conclusion, as
evidenced by the issuance of the Notice of Publication for the Xooker Mark.
43. Xooker is therefore entitled to a Declaratory Judgment declaring that use of the
Xooker Mark does not constitute trademark infringement or unfair competition under 15 U.S.C.
§ 1114.
COUNT II
(Declaratory Judgment –
Xooker’s Use Of The Xooker Mark Does Not Violate 15 U.S.C. § 1125(a))
44. Plaintiff repeats and realleges each and every allegation set forth in Paragraphs 1
through 43 of this Verified Complaint For Declaratory Relief as if fully set forth herein.
45. The NCAA seeks to eliminate use and block registration of the Xooker Mark
because its use would allegedly infringe on the NCAA’s own registered MARCH MADNESS
marks.
46. 15 U.S.C. § 1125(a) prohibits the use in commerce of “any word, term, name,
symbol, or device, or any combination thereof, or any false designation of origin, false or
cause confusion….”
47. Xooker’s electronic game identified by the Xooker Mark and which is
downloadable to wireless devices is not a good or service similar in any respect to the goods and
services that bear the NCAA’s MARCH MADNESS mark. The appearance of the marks is
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likewise dissimilar, and the Xooker name is prominently displayed alongside the Xooker Mark
on the game and on the Xooker website, when it appears on the website.
distinction between goods and services provided by the NCAA using the MARCH MADNESS
marks and goods and services provided by Xooker using the Xooker Mark.
49. The USPTO expert Examining Attorney came to the same conclusion, as
evidenced by the issuance of the Notice of Publication for the Xooker Mark.
50. Xooker is therefore entitled to a Declaratory Judgment declaring that use of the
Xooker Mark will not constitute trademark infringement or unfair competition under 15 U.S.C. §
1125(a).
use of the Xooker Mark does not constitute trademark infringement or unfair competition under
15 U.S.C. § 1114.
that use of the Xooker Mark does not constitute trademark infringement or unfair competition
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E. Such other and further relief to which Plaintiff appears entitled in addition to the
Respectfully submitted,
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