NWSL denies Royals trademark infringement suit, cites “ulterior purpose” from MLB

Filing on the last possible date, NWSL has denied the trademark infringement suit filed by Kansas City Royals, issuing eight affirmative defenses to the claims.

The document, filed by National Women’s Soccer League, LLC, consists of a strong denial of the claims filed by the baseball team.

In the list of affirmative defenses, NWSL makes a fairly startling assertion: “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.”

Some key excerpts from that document, linked above:

Second Affirmative Defense: Opposer cannot prevail where the goods and services involved in Applicant’s Applications are clearly different from the goods and services associated with Opposer’s alleged registrations and applications.

Third Affirmative Defense: Opposer’s claim for relief is barred by the doctrine of laches inasmuch as Major League Baseball has long been aware of Women’s Soccer in general and the Utah Royals FC in particular, but failed to timely take any proactive steps concerning the Utah Royals FC name or marks from the outset. Instead, Major League Baseball waited until Women’s Soccer and its members had invested significant resources into advertising, marketing, promoting and establishing the Utah Royals FC name and marks, and the goodwill associated therewith, only to now collaterally attack the Utah Royals FC marks after-the-fact following the USPTO’s publication of Women’s Soccer’s Applications. Major League Baseball’s claim for relief is barred by Major League Baseball’s deliberate decision to sit on its alleged rights.

Fourth Affirmative Defense: Opposer’s claim for relief is barred by the related doctrines of acquiescence and/or waiver inasmuch as Major League Baseball has long been aware of Women’s Soccer in general and the Utah Royals FC in particular but failed to timely take any proactive steps concerning the Utah Royals FC name or marks from the outset. Instead, via silence and inaction, Major League Baseball acquiesced in Women’s Soccer’s and its members’ heavy investment of resources into advertising, marketing, promoting and establishing the Utah Royals FC name and marks, and the goodwill associated therewith, only to now collaterally attack the Utah Royals FC marks afterthe-fact following the USPTO’s publication of Women’s Soccer’s Applications. Indeed, even now, save for attempting to thwart Women’s Soccer’s Applications, Major League Baseball has and continues to acquiesce in Women’s Soccer’s use of the subject marks and Women’s Soccer’s continued investment therein.

Fifth Affirmative Defense: Opposer cannot prevail where there is no evidence of actual confusion and no likelihood of confusion where the channels of trade are different, the goods and services are different, the respective marks, when considered in their entirety, are different, the prototypical consumers are different, there exist a number of similar marks for similar or related goods or services in the marketplace, and so forth.

Seventh Affirmative Defense: Opposer’s claim for relief is barred by the doctrine of unclean hands. Specifically, without any evidence that Women’s Soccer’s Applications will actually damage Major League Baseball in anyway, or otherwise create a likelihood of confusion, dilution or blurring relative to Major League Baseball’s asserted marks, 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. This is particularly apparent where a number of third parties have registered and are using ROYALS in relation to a wide variety of goods and services and Major League Baseball has neither opposed nor sought to cancel any such marks but has instead targeted Women’s Soccer.

And, of course, Real Salt Lake comes into play here:

Despite Real Salt Lake’s use of the word “real” in association with images of a lion, crown, and a mascot known as Leo the Lion since 2005, as well as similar uses by the Real Monarchs since 2014, Major League Baseball has never suggested a likelihood of confusion or otherwise sought to challenge such use in some thirteen (13) years.