Trademark opposition – consumers confusing soccer with baseball. KC Royals v. Utah Royals

Trademark opposition – consumers confusing soccer with baseball. KC Royals v. Utah Royals

A trademark is something on a product which indicates to consumers the identity of the manufacturer. Traditionally a trademark is though of as a word, phrase or symbol, but just about anything that identifies the source of a product can serve as a trademark. Trademark law in the United States is a combination of federal laws, state laws and common law principles.  A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the trademark, but registration of a trademark is not necessary for a trademark owner to gain some rights to the trademark.

Trademark infringement occurs when someone other than the trademark owner brands similar products with a trademark.  The main issue a plaintiff in a trademark infringement case must prove is that the defendant’s use of the trademark causes consumers to be confused regarding who produced a product.  But there are many other factors that a plaintiff must prove as well.  This is where trademark registration becomes valuable.  Registration of a trademark with the United States Patent and Trademark Office can be entered as evidence in a trademark infringement to demonstrate that the trademark is valid, owned by the plaintiff and that the defendant had notice of the trademark.

Trademark law can be tricky because it is intended to protect consumers, it is not intended to let companies create portfolios of trademarks.  A trademark owner who does not police the use of their trademark can lose their right to the trademark if consumers stop associating products with the trademark owner.  The United States Patent and Trademark Office performs a search before registering a new trademark to see if there is a likelihood of confusion between the new trademark and existing registered trademark, but sometimes an applicant can make a persuasive argument that a new trademark should be granted even when the new trademark will be used on products similar to an existing registered trademark.  In that case, it is up to the owner of a registered trademark to object to the registration of the new trademark.

An examples of a registered trademark owner objecting to the registration of a new trademark on similar products is  KANSAS CITY ROYALS BASEBALL v. NATIONAL WOMEN’s SOCCER LEAGUE, Opposition #91243302 (TTAB 2018).  Kansas City Royals is a baseball team based in Kansas City, Missouri.  The baseball team is frequently referred to as The Royals and has a portfolio of trademarks which include Royals alone or in combination with other words. National Women’s Soccer League is an organization that operates women’s soccer teams in the United States.  One of the soccer teams is called Utah Royals Football Club.  NWSL filed an application with the United States Patent and Trademark Office to register Utah Royals FC as a trademark.  After reviewing the application and finding no grounds to oppose the registration the United States Patent and Trademark Office published the application for opposition.  The baseball team opposed the registration.

The baseball team opposes the soccer club’s trademark on the grounds of Priority and likelihood of confusion Trademark Act Section 2(d) and Dilution by blurring Trademark Act Sections 2 and 43(c).  While it may seem silly that a baseball is worried that it will be confused with a soccer club, that is the tricky aspect of trademark law.  Both sides not only registered their trademark for entertainment services (i.e. baseball and soccer) but also products like key chains, apparel, towels, hats, and luggage.  The issue in this opposition is not whether consumers will be confused between baseball and soccer, but whether consumers will purchase a hat with Royals on it sold by the soccer club when the consumer really wanted a hat from the baseball team.

To win registration the soccer club will have to demonstrate that consumers won’t confuse its trademark with the baseball team’s trademark.

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