Trademark - Part II

This is a previously unpublished post I drafted on September 1, 2015.

At the end of last year, MLS released that strange T-Shirt with the logos of "MLS Originals." At the time, based on my interest in intellectual property and conversations about adding the classic Crew SC logo to the shirt for charity purposes, I hypothesized that the shirt was going to be used to Oppose Intelisport, Inc.'s Miami Fusion trademark application.

I was only partially correct. Although I've kept an eye on the Oppositions that MLS filed in the Miami Fusion cases (there has been little movement in the TTAB, other than a July 21, 2015 order consolidating the two cases and setting a trial date), a fellow Crew fan pointed me to filings for Los Angeles F.C. and Los Angeles SC. In both of these cases, MLS submitted a photograph of the MLS Originals T-Shirt as a specimen.

Today, the Examiner assigned to these filings issued an Office Action to MLS, stating that the specimen is unacceptable. "Registration is refused because the specimen does not show the applied-for mark in use in commerce . . . Specifically, the t-shirt shows the proposed mark among various other logos and not as a trademark for the goods," wrote the Examiner.This is not a final Office Action, meaning that registration is still possible. MLS has the option of submitting an acceptable specimen, such as a tag.

In another registration involving the Metrostars trademark, the Examiner assigned to that case accepted the MLS Originals T-Shirt as a specimen in February 2015. One possible distinction between the two outcomes is that Los Angeles F.C. and Los Angeles SC were new filings in 2014, while Metrostars was filed in 2003 and MLS was filing a Declaration of Use and Application for Renewal as required to keep the mark alive.

If this truly does distinguish the reason why the T-Shirt was acceptable for one purpose but not the other, it does not provide much guidance to predict the outcome of the Miami Fusion Opposition. On the one hand, this could indicate that the T-Shirt could serve as an acceptable specimen to challenge a mark MLS already owned at one time. On the other hand, MLS let the Miami Fusion mark die, so this is not a simple renewal and declaration of use.

Although it is fascinating, we likely can't read too much into it at this point. The most probable reason for the divergent outcomes is that different Examiners were assigned to the cases. However, the eventual conclusions of these cases could provide some insight into U.S. Soccer's recent filing for trademark protection of DOS A CERO. I'll let you draw your own conclusions about whether DOS A CERO is a source identifier of goods... Time will tell.

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.