Recently, Major League Soccer (MLS) began selling T-shirts (and posters) entitled "MAJOR LEAGUE SOCCER ORIGINALS." The T-shirt depicts more than fifty logos purporting to be original MLS logos.
Of these logos, there are some logos of teams that were part of MLS in its inaugural year in 1996, such as D.C. United, the Colorado Rapids, and the now defunct MetroStars. The T-shirt also depicts the Seattle Sounders, Toronto FC, Impact Montreal, and the Galaxy Rios as MLS originals. Three logos are dedicated to the Seattle Sounders. Strikingly absent from the T-shirt is the original team from 1996, the Columbus Crew.
Initially, the obscure nature of the T-shirt led some to believe that it was created for copyright purposes. However, generally speaking, a copyright is automatically formed when an original work of art is fixed by its author. Copyright registration is not usually mandatory, but is a condition of certain remedies. Thus, registration, and not publication, would be required for certain protections of copyrighted works.
Looking closely at the T-shirt, several of the logos have the ™ designation, putting others on notice of common law trademark rights. The function of a trademark is different than that of copyrights. A copyright protects a work of art, while a trademark acts as a source-identifier. The Constitution explicitly gives Congress authority to regulate copyrights and patents. Not so for trademarks: Interstate commerce is required for federal trademark protection.
Once an applicant shows it has used its proposed mark in commerce, and provides other required documentation and information, the Patent and Trademark Office (PTO) publishes the mark in the Official Gazette to give other trademark owners and interested third-parties the opportunity to oppose that application before the Trademark Trial and Appeal Board (TTAB). If there is no opposition, typically the trademark will be issued.
Trademark registrations do not last forever. In order to continue to receive federal protection, trademark owners must file affidavits of use and/or incontestability, along with specimens showing the mark as used in commerce in statutorily set time periods. If the trademark owners fail to do this, they risk cancellation of their marks.
This is precisely what happened to at least two of the marks depicted on the T-shirt. The PTO cancelled marks owned by MLS for FUSION MIAMI F.C. and M FUSION F.C. in 2006 and 2007, respectively. The Miami Fusion had folded in 2002, and it is unclear whether MLS intentionally or unintentionally failed to file the required documentation in the appropriate time period.
In 2013 and 2014, Intelisport, Inc. filed various intent-to-use trademark applications under 1(b) for MIAMI FUSION F.C., MIAMI FUSION CUP, MIAMI FUSION AWARD, and MIAMI FUSION MOVEMENT. On December 1, 2014, MLS filed an Opposition to the word mark MIAMI FUSION F.C.
In the Opposition, MLS asserts "In 1997 . . . [o]ne of the two expansion teams . . . MIAMI FUSION F.C. began play in the 1998 season in MLS’s first soccer-specific stadium." MLS claims common law rights in the mark, and argues that the mark is likely to confuse the public, partly because "soccer legend David Beckham would exercise his option for ownership of an MLS expansion team in Miami." After Beckham’s announcement, "there were reports in the soccer media that the new MLS team would be named Miami Fusion F.C., pointing to the Application as evidence."
Will this mysterious MLS Originals T-shirt be produced as evidence in the Opposition, attempting to show a use in commerce? If so, will the T-shirt be viewed as bona fide evidence of use in commerce, or will it be considered only token use? For a nerd of both intellectual property and the beautiful game, this case will be worth watching.
Please note that the information contained in this article is intended for informational purposes only and not as specific legal advice. It is not intended to and does not in any way establish an attorney-client relationship. To receive legal advice concerning your case or legal matter, please consult with an attorney of your choosing.
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