I was hoping, after taking a break from this column last week, that I would come back and share the good news surrounding Utah Royals FC, the kind that makes you smile, you know? I still intend to do so later this week. My main focus today, however, will be on the Kansas City Royals opposing Utah Royals FC’s trademark.
Here’s what we know
Kansas City Royals Baseball Corporation, in August, filed an opposition to the Utah Royals FC trademark with the U.S. Trademark and Patent Office, claiming that use of “the Royals” name and other merchandise will likely cause “confusion” or “mistake” and “deceive the trade and public.”
The NWSL denied the trademark infringement suit, issuing eight affirmative defenses to the claims, including that “Major League Baseball has filed the instant Opposition for the ulterior purpose of demoralizing Women’s Soccer and stifling professional female sports leagues in general.”
It appears that back in November of 2017, when new club joined the NWSL, they reached out to the Kansas City Royals for an agreement on the new name, but the baseball club’s representative told Dell Loy Hansen that they were “not in favor of this, and overall I would not encourage you to be very optimistic.” Dell Loy Hansen proceeded anyway to name the team.
Per the Salt Lake Tribune, there was initial concern that there could be trouble in the future over this. Still, Hansen was determined to name the club Utah Royals FC and was prepared to be sued, ordering for the creation of the logo.
Clarification: the Kansas City Royals are not suing Utah Royals FC. They are opposing their federal trademark registration. The baseball club is not in favor of a sports team using a name identical to theirs because of the potential confusion between the clubs.
Here’s how we react
Really?! Their main concern is that the two teams with the same name will cause confusion and deceive the public? If anyone has ever been confused differentiating between the Kansas City Royals, the baseball team, and Utah Royals FC, the professional women’s soccer club, or felt deceived, please stand up. Even I, in the Kansas City market/region, am not confused by this, what are the chances that others will be?
It’s an attempt by a big-time Major League Baseball club to make a statement. And because they are a major baseball club opposing a smaller league and club, this reflects poorly on them, and many in the women’s soccer community took notice.
REALLY? This is what MLB teams are worried about. Different sport, different gender, different place. Come on now. Help us inspire more girls, not tear their teams down. https://t.co/WNWY1E8GA6— Julie Foudy (@JulieFoudy) October 9, 2018
Get this shit out of here @Royals. You don’t have to support women’s sports. You weren’t expected to save FCKC. But literally not filing suit while the NWSL tries to grow is the LEAST you could do. Do less. https://t.co/fEGwNC29ak— Anthony DiCicco (@DiCiccoMethod) October 9, 2018
But the bigger question is, why now? It wasn’t as if this was news to the KC Royals. Utah Royals FC filed back on December 1, 2017, with official confirmation this past spring. It’s poorly-timed and unnecessary.
What happens next?
Since this is not a lawsuit for trademark infringement, but a challenge to the federal registration of the trademarks for Utah Royals FC (which were already approved), the Trademark Trial and Appeal Board will review the case.
Two outcomes can happen here: The Board could rule in favor of the baseball club, and overturn Utah Royals FC their federal registration based on that “confusion” that the KC Royals are claiming can happen. They could also rule that there are substantial differences (i.e., logo and merchandise) between the two clubs and allow Utah Royals FC their federal trademark registration to continue.
We may not know of the final ruling until 2020 because of the legal proceedings that must first take place, so, we wait.
*(Special shout out to Sleepy Turtle, who is an intellectual property attorney, for providing insight and wisdom on this issue).
One more thing:
The LA and Sacramento Kings both also have crowns in their logos and lion mascots and have managed to not sue each other. ¯\_(ツ)_/¯— Brian (@blyan) October 9, 2018
This is true. Both compete as the “Kings” and have a crown on their logos. Additionally, both teams play in the state of California. Just imagine the confusion there?!
If the residents of California are not confused or deceived by two professional teams in different leagues as the “Kings,” with just 384 miles between Sacramento and L.A., then I think sports fans are smart enough to distinguish between the Royals FC playing soccer in Utah and the Royals baseball club in Kansas City.
Okay, really, one more thing because this was my favorite reaction to our coverage today: