Kansas City Royals sue NWSL over Utah Royals FC trademark

If you’ve just been getting used to the name Utah Royals FC following the team’s debut season, you might be in for a surprise.

Kansas City Royals Baseball Corporation, in August, filed an opposition to the Utah Royals FC trademark.

The suit, filed with the U.S. Trademark and Patent Office, describes the following as grounds for opposition. As context, “Opposer” in this case is the Kansas City Royals Baseball Corporation.

NWSL was given an Oct. 8 deadline to answer, and that’s yesterday — so expect more to come of this. The final deadline for the case, outlined in another document, is in March 2020.

Let’s just jump headlong into this. I’ll provide some annotation below items.

1) Opposer is the owner of the renowned KANSAS CITY ROYALS MAJOR LEAGUE BASEBALL club that from its inception has been commonly known and referred to simply as the ROYALS.

2) Opposer’s ROYALS club has had a storied history, including participation in nine POSTSEASON playoff series and four WORLD SERIES championships, winning the title twice, including most recently in 2015.

3) Many of the greatest and most famous Major League Baseball players are known for their accomplishments as members of Opposer’s ROYALS club, including six members of the National Baseball Hall of Fame, an organization that honors those individuals, including players and managers, who have made outstanding contributions to the game of baseball (George Brett, Orlando Cepeda, Harmon Killebrew, Gaylord Perry and managers Joe Gordon and Bob Lemon); three winners of the Cy Young Award, an honor given out once a year to the best pitcher in each of the two Major League Baseball leagues (David Cone, Bret Saberhagen and Zach Greinke); and one player who made American Sports history by becoming the first modern-day athlete to play at the professional level in two sports (Bo Jackson, who also played for the Oakland Raiders football team of the National Football League)

4) For decades and since long prior to December 1, 2017, Applicant’s constructive first use date, Opposer and its predecessors, and their affiliated and related entities, its hundreds of licensees and/or numerous well-known sponsors have used and/or have constructive use of the names and marks ROYAL, ROYALS, or LOS REALES, alone or with other word, letter and/or design elements, including a lion mascot and crown designs, as well as the geographic designations KANSAS CITY, OMAHA and BURLINGTON (“Opposer’s ROYALS Marks”) and designs of a crown or a lion mascot with other marks of Opposer (“Opposer’s Design Marks,” with Opposer’s ROYALS Marks, collectively referred to as “Opposer’s Marks”), in connection with baseball games and exhibition services and a wide variety of goods and services (...)

I’ve cut this one off because it just goes on and on, which makes sense from a legal perspective, but I’m not going to force you in to reading that. The lion mascot and crown designs are likely where they’re taking umbrage.

5) Opposer owns United States Federal applications and registrations for Opposer’s Marks in International Classes 6, 9, 14, 16, 20 (...)

This goes on, too. It also, at the end of the section, says a number of those are incontestable. I don’t really know what that means in this context.

6) For decades and since long prior to December 1, 2017, Applicant’s constructive first use date, Opposer and its predecessors, and their affiliated and related entities, licensees and/or sponsors have extensively promoted and advertised the sale and distribution of goods and services bearing or offered in connection with Opposer’s ROYALS Marks, including, but not limited to, baseball games and exhibition services and a wide variety of goods and services, including, but not limited to (...)

Again, not going to bore you with the mundane details.

7) As a result of extensive sales, advertising and promotion of its goods and services bearing or offered in connection with Opposer’s Marks, as well as of the televised, streamed or radio broadcasts of games and the widespread media coverage of the Opposer’s ROYALS club, Opposer’s ROYALS club and Opposer’s Marks have achieved widespread recognition and fame. As a consequence, Opposer has built up highly valuable goodwill in Opposer’s Marks, which goodwill has become closely and uniquely identified and associated with Opposer.

This is just setting out the case they have.

8) Applicant, the National Women’s Soccer League, is a professional women’s soccer league that started play in 2013 with eight founding members, including the Kansas City franchise, FC Kansas City, which enjoyed one of the most successful franchises in the league, including winning consecutive championships in 2014 and 2015.

9) In January 2017, however, the FC Kansas City franchise was sold, and its fortunes waned.

This is largely a historical note, at this point.

10) On November 16, 2017, Applicant announced that it had granted a franchise license to an entity that would launch a new team in Salt Lake City for the 2018 season. Media reports indicated that the new team would replace the FC Kansas City franchise.

11) On November 20, 2017, Applicant further announced that it had reacquired FC Kansas City’s interest in the league and that the team was ceasing operations. Applicant instead assigned the contract rights to FC Kansas City’s players and draft picks to the new Salt Lake City team.

Again, historical context.

12) The next day, a lawyer who indicated that he was representing the new owner of the Salt Lake City team contacted an outside lawyer for Opposer. He indicated that he was clearing a name for a new women’s soccer team and that the proposed name was UTAH ROYALS. He sought Opposer’s agreement to the new name.

This is interesting. I don’t know if having sought some sort of agreement prior to the name being announced will backfire on Dell Loy Hansen and company, but it’s something worth pondering.

13) A week later, Opposer’s outside counsel indicated to the lawyer for the new Salt Lake City team owner, that while he would follow up with Major League Baseball, he already knew that the Royals Club “is not in favor of this, and overall I would not encourage you to be very optimistic.”

Again, this is very interesting.

14) Despite the negative feedback, on December 1, 2017, Applicant filed the Applications to register Applicant’s Mark and Applicant’s Design Mark for Applicant’s Goods and Applicant’s Services (together “Applicant’s Goods and Services”), based on an intent to use.

15) On December 1, 2017, Applicant also publicly announced the team name as UTAH ROYALS FC and unveiled the new team logo that is the subject of Application Serial Nos. 87704696 and 87704706 that incorporated a lion and crown design, two indicia strongly associated with Opposer’s ROYALS club.

Right, here we are. This is the core of the complaint.

16) Upon information and belief, the adoption of the ROYALS name for the new franchise as well as indicia of a lion and crown design, indicia associated with Opposer, constituted an attempt to tie the name and logo to the former Kansas City location of the predecessor team it replaced by trading on the goodwill and recognition of Opposer’s ROYALS club and Opposer’s Marks.

This is a big claim. I don’t believe it, actually, as it doesn’t recognize the existence of Real Salt Lake and Real Monarchs.

17) Upon information and belief, Applicant did not use Applicant’s Marks in commerce for the goods and services covered by the Applications prior to December 1, 2017, Applicant’s constructive first use date.

18) Applicant’s Goods and Services are identical and/or closely related to the goods offered and services rendered in connection with Opposer’s Marks.

19) The word ROYALS in Applicant’s Marks is identical to Opposer’s ROYALS Marks. The word UTAH in Applicant’s Marks is a geographic designation, as are the geographic designations used in certain of Opposer’s Marks.

Again, the core of their complaint.

20) Applicant’s Design Mark contains prominent uses of a lion and crown design as do certain of Opposer’s Marks that feature crown designs or a lion mascot.

21) Applicant’s Marks so resemble Opposer’s Marks as to be likely, when used in connection with Applicant’s Goods and Services, to cause confusion, to cause mistake, and to deceive the trade and public, who are likely to believe that Applicant’s Goods and Services have their origin with Opposer and/or that such goods and services are approved, endorsed or sponsored by Opposer or associated in some way with Opposer. Opposer would thereby be injured by allowing the registration of Applicant’s Marks.

22) Opposer’s Marks are distinctive and famous and were so prior to December 1, 2017, Applicant’s constructive first use date. Registration of Applicant’s Mark and Applicant’s Ref No. 21307.030 9 21307/030/2496620.3 Design Mark will also injure Opposer by causing a likelihood of dilution by blurring of the distinctive quality of Opposer’s Marks.

So, there we have it.

Now, this may be nothing to worry about — trademark suits are fairly normal, after all, and are sometimes employed to maintain ownership or a mark — but I am certainly not a trademark lawyer. If you are, and you’d like to weigh in, find my email on the masthead.