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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF KENTUCKY
CENTRAL DIVISION AT LEXINGTON

XOOKER, LLC,
A Kentucky Limited Liability Company, Civil Action No. _________________

Plaintiff, Judge __________________________

V. VERIFIED COMPLAINT FOR

DECLARATORY RELIEF
NATIONAL COLLEGIATE ATHLETIC
ASSOCIATION, An unincorporated
association,

Defendant.

Plaintiff, Xooker, LLC (“Xooker”), through counsel, for its Verified Complaint For

Declaratory Relief against Defendant, the National Collegiate Athletic Association (“NCAA”),

respectfully states as follows:

I. THE PARTIES, JURISDICTION, AND VENUE

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

currently operates only in the Commonwealth of Kentucky.

2. Defendant NCAA is an unincorporated association with its principal place of

business in Indianapolis, Indiana.

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.

5. Venue is appropriate in this Court pursuant to 28 U.S.C. §1391(b) because a

substantial part of the events and omissions giving rise to this action and a substantial part of the

property that is the subject of this action is situated in this District.

II. FACTUAL ALLEGATIONS

A. Plaintiff’s BASKETBALL MADNESS Mark

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

copy of the ‘547 Application is attached as Exhibit 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

the USPTO on December 19, 2017.

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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

copy of the Notice of Publication is attached as Exhibit C.

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).

11. If no Notice of Opposition is filed during the notice time, as extended if

applicable, a Certificate of Registration is issued by the USPTO.

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.

B. The NCAA’s Notice Of Opposition.

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

and Appeal Board form, attached as Exhibit F, pp. 1-4.

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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

confusion with the following NCAA registered marks:

a. Registration No. 1,571,340 for MARCH MADNESS to identify

“entertainment services, namely, presentation of athletic and entertainment

personalities in a panel forum.” See Exhibit E, pp.1-2.

b. Registration No. 2,425,958 for MARCH MADNESS to identify

“basketballs, basketball blackboards [ and related accessories, namely,

pumps, inflation needles and nets. ]” See id., p. 2.

c. Registration No. 2,425,962 for MARCH MADNESS to identify “pre-

recorded video cassettes featuring sporting events … programs, folders,

handbooks, magazines and trading cards related to interscholastic

activities … cups and mugs … towels and cloth banners … clothing,

namely shirts, sweatshirts, [shorts, ] and hats.” See id., pp. 2-3.

d. Registration No. 2,478,254 for MARCH MADNESS to identify “wearing

apparel associated with an annual basketball tournament between college

teams; namely, tee shirts, sweatshirts, sweat pants, caps, sweaters and

jackets.” See id., p. 3.

e. Registration No. 2,485,443 for MARCH MADNESS to identify

“entertainment in the nature of basketball tournaments between college

teams.” See id.

f. Registration 3,025,527 for MARCH MADNESS to identify “computer

game software and related instructional manuals and guides sold as a unit

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… telecommunications services; namely the transmission of voice, data,

images, audio, video and information via local and long distance

telephone, satellite and global computer networks; leasing

telecommunications equipment, components, systems and supplies;

electronic mail services; telephone voice messaging services; providing

multiple-user access to global computer networks to transmit, receive and

otherwise access and use information of general interest to consumers;

web casting of athletic games, tournaments, exhibitions, and events via the

Internet … providing sports information via the Internet.” See id., pp. 3-4.

g. Registration No. 3,303,263 for MARCH MADNESS to identify

“carbonated soft drinks.” See id., p. 4.

h. Registration No. 4,430,117 for MARCH MADNESS to identify “cups and

mugs.” See id.

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.

17. Xooker’s BASKETBALL MADNESS is a game that can only be accessed

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

compete against other real players.

18. Xooker currently operates only in the Commonwealth of Kentucky.

19. Upon information and belief, the NCAA does not utilize MARCH MADNESS on

any mobile gaming applications.

C. The Relevant Statutes. 1

20. 15 U.S.C. § 1114 states in relevant part:

Any person who shall, without the consent of the registrant—

(a) use in commerce 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 use is likely to cause confusion, or to cause
mistake, or to deceive; … shall be liable in a civil action by the registrant
for the remedies hereinafter provided. Under subsection (b) hereof, the
registrant shall not be entitled to recover profits or damages unless the acts
have been committed with knowledge that such imitation is intended to be
used to cause confusion, or to cause mistake, or to deceive.

15 U.S.C.§ 1114(1).

1
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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21. 15 U.S.C. § 1125(a) states in relevant part:

(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--

(A) is likely to cause confusion, or to cause mistake, or to deceive as to

the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person … shall be liable in a
civil action by any person who believes that he or she is or is likely to be
damaged by such act.

15 U.S.C. § 1125(a).

22. In this case, no likelihood of confusion exists between Xooker’s BASKETBALL

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.

D. There Is No Likelihood Of Confusion.

1. The Marks Are Not Impermissibly Similar In Appearance, Sound,

Connotation, And Commercial Impression.

23. One basis for the NCAA’s objection to the Xooker Mark is that BASKETBALL

MADNESS is allegedly similar to that of the NCAA mark(s), MARCH MADNESS.

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

the mark MARCH MADNESS than is the mark BASKETBALL MADNESS.

27. The dissimilarity of the marks BASKETBALL MADNESS and MARCH

MADNESS in their entireties as to appearance, sound, connotation, and commercial impression

lead to finding of no likelihood of confusion.

2. The Goods And Services Identified By The Marks Are Unrelated.

28. The goods and services identified by BASKETBALL MADNESS are not related

in any way to those identified by MARCH MADNESS.

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

presenting athletic and entertainment personalities in a panel forum, basketball tournaments

between college teams, and telecommunications. See generally, Exhibit E.

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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3. The Xooker Mark Is Clearly Identified With Xooker, LLC.

32. The Xooker Mark as used in the BASKETBALL MADNESS game prominently

displays Plaintiff’s house mark, XOOKER, on its face.

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:

35. There is no likelihood of confusion on the part of consumers as to the distinction

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

use of the Xooker Mark.

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

U.S.C. §§ 1114 and/or 1125(a).

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

use is likely to cause confusion, or to cause mistake, or to deceive…”

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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41. As such, there is no likelihood of confusion on the part of consumers as to the

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

misleading description of fact, or false or misleading representation of fact, which … is likely to

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.

48. As such, there is no likelihood of confusion on the part of consumers as to the

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).

PRAYER FOR RELIEF

WHEREFORE, Xooker requests Judgment on its Verified Complaint For Declaratory

Relief herein as follows:

A. A Declaratory Judgment pursuant to 28 U.S.C. §2201(a) on Count I declaring that

use of the Xooker Mark does not constitute trademark infringement or unfair competition under

15 U.S.C. § 1114.

B. A Declaratory Judgment pursuant to 28 U.S.C. §2201(a) on Count II declaring

that use of the Xooker Mark does not constitute trademark infringement or unfair competition

under 15 U.S.C. § 1125(a).

C. A docket preference expediting these proceedings in accordance with Rule 57 of

the Federal Rules of Civil Procedure;

D. A reasonable attorneys’ fee; and

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E. Such other and further relief to which Plaintiff appears entitled in addition to the

costs and disbursements of this action.

Respectfully submitted,

/s/ Richard A. Getty

RICHARD A. GETTY
DANIELLE H. BROWN
and
MATTHEW W. ENGLISH

THE GETTY LAW GROUP, PLLC

1900 Lexington Financial Center
250 West Main Street
Lexington, Kentucky 40507
Telephone: (859) 259-1900
Facsimile: (859) 259-1909
rgetty@gettylawgroup.com
dbrown@gettylawgroup.com
menglish@gettylawgroup.com

COUNSEL FOR PLAINTIFF,

XOOKER, LLC

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