Intellectual Property Insights from Fishman Stewart
Mini Article – Volume 22, Issue 19
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Will “The Real USFL” Please Stand Up?
By Norman K. Freda
After a 37-year absence, the United States Football League (“USFL”) returned this year for another season!… Or did it?
The USFL was a springtime professional American football league that kicked off its first season in 1983 and featured some all-time great football players, such as Jim Kelly, Herschel Walker, and Reggie White. After three successful seasons, the USFL moved its season to the fall and directly competed with the National Football League (NFL). This move turned out to be the downfall of the USFL, and ultimately, led to its merger with the NFL in 1986.
Fast forward a few decades to June 2021 when Fox Sports “relaunched” the “new USFL” as a brand-new football league that is completely unrelated to the USFL that existed from 1983-1986 (“original USFL”)—that is, apart from its name and appearance. The new USFL is using the same league name and team names as the original USFL, as well as redesigned/updated variations of the original USFL’s league and team logos.
The former USFL team owners were less than thrilled at the prospect of a “relaunch” that did not include them. So, they formed a corporation called “The Real USFL” and sued Fox Sports for trademark infringement, false advertising, and false association, among other things.
Back in its heyday, the original USFL had registered approximately 400 trademarks for the league name, league logo, team names, and team logos. However, by 1992 all of the original USFL’s registered trademarks had lapsed. Leading up to the “relaunch,” Fox Sports began filing trademark applications for many of the original USFL’s old trademarks, including “USFL” and numerous team names and logos. After all, if nobody else was using them, why not?
The Real USFL filed suit and moved for a preliminary injunction to stop Fox Sports’ use of the disputed trademarks. The motion was denied largely because of Fox Sports’ significant financial investment in the new USFL and The Real USFL’s minimal use of the disputed trademarks.
The Real USFL may not have made it into the endzone on this drive, but it won the game because the court ultimately concluded that The Real USFL was likely to win on the merits of its trademark infringement claim.
The court reasoned that even though the original trademark registrations had all expired by 1992, the actions of The Real USFL (e.g., consulting on media projects, managing royalties from apparel sales, etc.) showed an intent to keep using the disputed trademarks, and thus, The Real USFL had a protectable interest in the trademarks. The court also concluded that there was a likelihood of consumer confusion, noting that Fox Sports had adopted the disputed trademarks to “capitalize on the nostalgia for the [original USFL].”
Considering the court’s position that Fox Sports was unlikely to win the case in the end, it is unsurprising that the parties decided to settle at the end of August 2022. The lawsuit has been dismissed, and Fox Sports confirmed that the new USFL will be returning in 2023 for a second season.
While this is surely welcome news to football fans, the settlement of this case does little to reduce lingering consumer confusion between the original USFL and the new USFL. Yet, it serves as a cautionary tale that a lapsed federal trademark registration does not necessarily mean that all rights to a trademark are abandoned and free for the taking.
Under U.S. trademark law, there is a presumption that a trademark has been abandoned if its owner stops using the trademark for three consecutive years. This presumption can be rebutted with evidence of use or intent to resume use of the trademark, including licensing of the trademark. If you would like advice on how to properly maintain your trademark, or want to talk sports, please feel free to contact us.
Norman K. Freda is an attorney at Fishman Stewart and practices in the fields of patent, trademark, copyright law, and litigation. He holds a BS degree in Applied Engineering Sciences from Michigan State University. Check out his bio.
Published September 23, 2022
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