The New Big East Trades Off Storied Reputation

Earlier this year, the Big East Conference of Patrick Ewing and Carmelo Anthony enjoyed its last conference tournament at Madison Square Garden. With the Syracuse Orange and Pittsburgh Panthers joining the Atlantic Coast Conference (ACC) for the 2013-2014 season, and the Louisville Cardinals and Notre Dame Fighting Irish set to join the ACC one year later, arguably the most storied men’s college basketball conference of the past 30 years no longer exists. Or does it?

Given the history of the teams that are no longer in the Big East Conference, especially Syracuse (a five-time winner of the Big East Conference Tournament and the 2003 NCAA Men’s Basketball Champion) and Connecticut (seven-time winner of the Big East Conference Tournament and the 1999, 2004 and 2012 NCAA Men’s Basketball Champion), one question on college basketball fans’ minds may be whether the new Big East conference is deserving of the storied moniker. Legally though, the issue is whether the seven teams set to comprise the new Big East have the legal right to operate under the old Conference trademark, given the goodwill created by key teams that are departing.

The Big East Conference trademark is owned by Big East Conference, the Corporation, and is registered with the United States Patent and Trademark Office (PTO) under Registration Number 2,627,568. Licensing of the Big East Conference trademark is administered through Licensing Resource Group, which manages the licensing of all products bearing the Big East Conference trademark according to the Big East Conference’s “General Conference Policies.” The policies, while acknowledging that each individual school has its own licensing program for its products, outline the terms and royalty rates owed the Big East Conference based upon the type of product or event bearing the Big East Conference’s trademark. To transfer the trademark, the voting members of the corporation have to consent to both the trademark transfer and the rescission of the existing licensing agreements.

Currently, it appears that the transfer of the Big East Conference trademark will be smooth. In February, the member schools voted to allow the Big East Conference trademark to transfer to the new conference, which includes the Catholic 7 schools. To secure a deal, the schools that are remaining and losing the shine of the Big East Conference trademark are being well compensated by exit fees. Some sources estimate that the remaining teams − Connecticut, Cincinnati, and South Florida − will receive payments totaling $68.8 million dollars out of the so-called “Realignment Reserve Fund,” which was funded through payments made by teams leaving the conference.

Because the remaining Big East Conference voting members consented to a peaceful transfer of the Big East Conference trademark, a discussion of goodwill is mooted; however, it is interesting to consider how courts would evaluate this scenario under common law. Under typical common law trademark analysis, transferring a trademark would be invalid unless the goodwill associated with the trademark was transferred simultaneously with the mark. Goodwill is evaluated based on the quality of services that are transferred from one entity to another and whether the entity receiving the trademark is meeting the same quality of services as the prior trademark owner. Goodwill could be a major issue in this situation, as the pivotal question would be whether the same quality of services (or better) is being offered by the new Big East Conference.

But what are the services that a college basketball conference offers, and how would one determine the level of quality associated with these services? Some factors that seem very difficult to evaluate objectively include the history of the conference, the value of rivalries to generate fan interest, and overall positive association of consumers with the Big East Conference’s “brand.”

Is the quality of service being degraded when the Big East Conference loses a team like Syracuse, who was involved in some of the great rivalries within the conference and is led by head coach Jim Boeheim, who has coached at Syracuse since the dawning of the Big East and whose droll wit and zone defense are synonymous with the Big East? Similarly no team can boast the sustained national dominance of the Connecticut Huskies, whose men’s basketball team has won NCAA Championships in three separate decades, not to mention the women’s basketball team who tied an NCAA record with its eighth national championship this year. Is the value of the dominance of a team like Connecticut separable from the Big East Conference trademark without sacrificing some of the quality of service demanded of a trademark transfer? On the other hand, if in its first year of operation, the “new Big East” had 5 teams ranked in the top 20, would that far outweigh any argument of historical diminution?

In the end, these questions will remain unanswered (for now), as a result of an agreement among the various schools involved that appears to have guaranteed that the Big East Conference trademark will move with the Catholic 7 at the start of the 2014-2015 college basketball season. But only time will tell whether the Big East Conference brand survives and thrives following the loss of some of its original and most influential members.