US Soccer Foundation vs. US Soccer Federation

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In a stunning and historic development, the U.S. Soccer Foundation Thursday filed a lawsuit against the U.S. Soccer Federation in the U.S. District Court for the District of Columbia seeking a declaratory judgment of non-infringement of trademarks in a dispute over who controls the foundation’s name and branding “marks.”


One of the missions of the foundation is to “enhance, assist and grow the sport of soccer in the United States, with a special emphasis on underserved communities.” For more than 25 years, the foundation has worked with the USSF, a foundation press release stated. The federation’s mission has been the official governing body of amateur and professional soccer, including the oversight of men’s, women’s and youth national teams.


The lawsuit was filed after a recent demand by the USSF that the foundation cease using its name and logos. According to foundation, the name and logos have defined the organziation’s “brand and charitable work” since its inception in 1994. According to foundation’s complaint, “the USSF has threatened to hijack the foundation’s trademarks for its own use — likely in an effort to capitalize on lucrative business opportunities when the United States hosts the World Cup in 2026.”


SI's sports law contributor Michael McCann wrote on the filing on Monday. Excerpt:


While the question of who owns “U.S. Soccer Foundation” is not a matter of life or death, the Foundation regards a prospective name loss as an existential threat. A rebranding campaign would be costly and could disrupt the Foundation’s fundraising and marketing efforts. Even if the Foundation doesn’t lose its name, it maintains that it has already been damaged by the USSF. The Foundation argues that an “unreasonable delay” at the hands of the USSF to assert intellectual property rights essentially set up the Foundation to fail. Over a 22-year period, the Foundation has relied on specific marks to build a distinguishable identity and marketable brand. The Foundation says it never received any notice or warning that such reliance was problematic. It now has to fight to keep that identity.


The Foundation hopes that Judge Kelly and potential jurors will come to the rescue. The non-profit’s complaint draws heavily from the Lanham Act (the Trademark Act of 1946), which is the primary federal law for trademarks and covers a wide-range of disputes. The complaint pleads five claims against the USSF: (1) declaratory judgment of non-infringement; (2) declaratory judgment of no liability for infringement due to several defenses (laches, abandonment, waiver, estoppel and unclean hands), (3) rectification of the trademark register; (4) unfair or deceptive trade practice (under D.C. consumer protection laws); and (5) unjust enrichment.


The litigation will center on several key legal issues to which the Foundation and the USSF will offer dueling perspectives. Perhaps most important is the extent to which consumers are confused by “U.S. Soccer Foundation.” Courts review trademark infringement cases by assessing whether consumers are likely or unlikely to be perplexed as to the source of a specific mark. If consumers tend to be confused, then use of the mark by the non-owning party—the Foundation—would be deemed infringement.


Courts use eight factors to determine consumer confusion. One of those factors is evidence of actual confusion. To illustrate how “evidence of actual confusion” could play out, the Foundation and the USSF might offer survey data and other empirical findings to prove opposite points: the Foundation wants to persuade the court that consumers aren’t confused by “U.S. Soccer Foundation” and that they know that it refers to the Foundation, whereas the USSF will argue that many consumers are confused. To bolster that point, the USSF could point out that the USSF was instrumental in the creation of the Foundation. The historical links between the two entities could cause some consumers to conflate them. If consumers aren’t confused, the USSF might insist that they will be confused once the USSF uses the mark with greater frequency.


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That's a really hard one. They both use the same acronyms and work in the same sport, ostensibly towards the same goal. The only solution I can think of is for the Federation to call itself "USA Soccer" or some such thing, but that's also too vague. The Federation can't also switch to "Association," hence it run up against the USASA.

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On 12/21/2018 at 8:48 AM, El Scorcho said:

This reminds me of the WWF moving to WWE.

Except here, the two entities in question are in the same overarching world of American soccer, whereas the WWE/WWF was a wrestling promotion and an animal conservation effort.


Like I said, I don't know how I would handle this. This is especially true since the organization for adult amateur American soccer is the USASA, which takes an option away for the Federation.

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