Major League Baseball’s Kansas City Royals in late August sued the National Women’s Soccer League over use of the Utah Royals’ name and insignia, per filings with the U.S. Patent and Trademark Office.
The American League club in its filing attached more than two dozen iterations of logos, team names and mascots. The filing states that the baseball team has long been known as simply the “Royals.”
Because of that, the suit claims, use of the soccer franchise’s name and other paraphernalia will likely cause “confusion” or “mistake,” and “deceive the trade and public”
The NWSL denied the allegations Monday, stating in its filing that there is “no likelihood of confusion” between the two franchises' logos. The league also accused the baseball franchise of “broad overreach,” stating that the trademark suit is intended to “interfere with and stifle Women’s Soccer and professional female sports leagues in general.”
“At the moment, we have no comment on pending legal matters,” a Utah Royals spokesperson told The Tribune via text message.
The baseball club mentioned in the filing how FC Kansas City, which folded just before the Utah Royals joined the NWSL, ceased operations in late November of last year. It also stated that the league "assigned the contract rights to FC Kansas City’s players and draft picks to the new Salt Lake City team.”
In its response, the NWSL said that a team operator acquired membership interests of the Kansas City team when it ceased operations, and that “irrespective of and without transferring any of FC Kansas City’s former championships, assets, liabilities or other awards or recognition, [the league] subsequently provided distinct and new interests for an unrelated Women’s Soccer league team to be established in Salt Lake City, Utah.”
(Scott Sommerdorf | The Salt Lake Tribune) RSL owner Dell Loy Hansen addresses the students in the new Academy's opening week., Thursday, August 23, 2017.
The NWSL further claimed that it was only after the USPTO determined that Women’s Soccer could apply for patents and trademarks that the baseball franchise “took steps to thwart Women’s Soccer’s Applications.”
“MLB has negotiated in good faith with the Salt Lake team," the baseball league said in a statement to The Salt Lake Tribune." Since we were faced with a required deadline, we took a step to preserve our rights while we continue a dialogue to attempt to find a fair resolution.”
The lawsuit claims that in late November 2017, a legal representative of Utah Royals owner Dell Loy Hansen spoke with a lawyer representing the Kansas City franchise to seek “agreement for the new name.” A week later, the filing claims, the baseball club’s lawyer told Hansen’s lawyer that the Royals club “is not in favor of this, and overall I would not encourage you to be very optimistic.”
The NWSL denied both claims, but acknowledged that a phone call and follow-up correspondence between the two sides did take place.
In April, The Salt Lake Tribune reported that there was initial concern in naming the Utah women’s soccer team the Royals because the team was, in effect, replacing the team from Kansas City. Hansen, however, was determined.
“We’re going to make a logo. Sue us,” Hansen said in April, recalling a conversation with his attorneys during a conference call. “... Right until then we couldn’t print anything, we couldn’t make a logo. Everybody was just slowing us down.”
The league also denied every other allegation levied by the baseball franchise in its trademark suit.
As part of the filing process, both parties are required to schedule and hold a discovery conference by Nov. 7. The parties are required to discuss “the nature and basis of their claims and defenses;” “the possibility of promptly settling, or at least narrowing, the score of claims and defenses;” and “arrangements for disclosures, discovery, preserving discoverable information and introduction of evidence at trial.”
Discovery opens on Nov. 7.
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