IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`76/526571
`In re: Application Serial No.:
`USA FOOTBALL
`For the Mark:
`July 1, 2003
`FIIGLII
`Published in the Official Gazette: September 21, 2004
`
`
`
`USA Football, Inc.
`
`
`
`V.
`
`USA Football, Inc.
`
`Applicant.
`
`
`TO:
`
`BOX TTAB — FEE
`COMMISSIONER FOR TRADEMARKS
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NOTICE OF OPPOSITION
`
`The above-identified opposer, USA Football, Inc., a Delaware not-for-profit
`
`corporation, having a place of business at 8300 Boone Boulevard, Suite 870
`
`Vienna, Virginia 22182, believes that it will be damaged by registration of the mark USA
`
`FOOTBALL in Application Serial No. 76/526571 for EDUCATION AND
`
`ENTERTAINMENT SERVICES, NAMELY YOUTH FOOTBALL EXHIBITIONS,
`
`SEMINARS AND CLINICS FOR YOUTH IN THE FIELD OF FOOTBALL, AND SPORTS
`
`EVENTS, NAMELY FOOTBALL; PROVIDING SPORTS AND ENTERTAINMENT
`
`10/14/2004 ZCLIFTDI 00000050 76526571
`
`01 FC:6402
`
`3oo.oo up
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`76/526571
`In re: Application Serial No.:
`USA FOOTBALL
`For the Mark:
`July 1, 2003
`FIIGLII
`Published in the Official Gazette: September 21, 2004
`
`
`
`USA Football, Inc.
`
`
`
`V.
`
`USA Football, Inc.
`
`Applicant.
`
`
`TO:
`
`BOX TTAB — FEE
`COMMISSIONER FOR TRADEMARKS
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NOTICE OF OPPOSITION
`
`The above-identified opposer, USA Football, Inc., a Delaware not-for-profit
`
`corporation, having a place of business at 8300 Boone Boulevard, Suite 870
`
`Vienna, Virginia 22182, believes that it will be damaged by registration of the mark USA
`
`FOOTBALL in Application Serial No. 76/526571 for EDUCATION AND
`
`ENTERTAINMENT SERVICES, NAMELY YOUTH FOOTBALL EXHIBITIONS,
`
`SEMINARS AND CLINICS FOR YOUTH IN THE FIELD OF FOOTBALL, AND SPORTS
`
`EVENTS, NAMELY FOOTBALL; PROVIDING SPORTS AND ENTERTAINMENT
`
`10/14/2004 ZCLIFTDI 00000050 76526571
`
`01 FC:6402
`
`3oo.oo up
`
`
`
`INFORMATION IN THE NATURE OF NEWS RELEASES, AND PUBLICITY AND
`
`PROMOTIONAL PRESENTATIONS VIA A GLOBAL COMPUTER NETWORK OR ON-
`
`LINE SERVICE in International Class 41, and hereby opposes same.
`
`USA Football, Inc.
`8300 Boone Boulevard, Suite 870
`Vienna, Virginia 22182
`
`The grounds for opposition are as follows:
`
`General Allegations of Fact
`
`1.
`
`In December 2002, Opposer, USA Football, Inc. was formed as a non-
`
`profit association with the goals of promoting the sport of amateur football at the high
`
`school and youth level in the United States.
`
`2. Since its creation, Opposer has engaged in promoting the sport of
`
`amateur football at the high school and youth level in the United States and offering
`
`products and services related thereto.
`
`3. Opposer adopted the mark USA FOOTBALL (the “USA FOOTBALL
`
`Mark”) and the mark USA FOOTBALL in conjunction with a graphic design (the “USA
`
`FOOTBALL Design Mark”) (collectively, the “USA Football Marks”) in December 2002
`
`and March 2003, respectively, and has used and continues to use the USA Football
`
`Marks on or in connection with promoting the sport of amateur football at the high
`
`school and youth level in the United States and offering products and services related
`
`thereto.
`
`
`
`4. Opposer is the owner of the following applications for federal registration,
`
`as well as the goodwill attached to the marks subject of those applications. Official
`
`information from the U.S. Patent and Trademark Office TARR website accompanies
`
`this Notice of Opposition as Exhibit A.
`
`,
`l
`
`Serial No. 78/341626
`USA FOOTBALL
`Services: Educational and entertainment services, namely youth sports
`programs, sports exhibitions, seminars and sports events; providing sports and
`entertainment information via a global computer network or a commercial on-line
`service
`
`Serial No. 78/341632
`USA FOOTBALL and Design
`Services: Educational and entertainment services, namely youth sports
`programs, sports exhibitions, seminars and sports events; providing sports and
`entertainment information via a global computer network or a commercial on-line
`service
`
`5. The services described in these applications and other activities furthering
`
`the Opposer’s missions of promoting the sport of amateur football at the high school
`
`and youth level in the United States and offering products and services related
`
`thereto (“Sen/ices”).
`
`6. Opposer has maintained a considerable presence nationwide through
`
`significant expenditures to market and promote the USA FOOTBALL Marks in
`
`association with the Services and signifying itself as the sole source of those
`
`Services including without limitation through its internet website at
`
`httg://www.usafootball.com, sponsorships of nationally advertised amateur football
`
`events and education initiatives, and community involvement.
`
`7. Opposer has acquired goodwill in its USA FOOTBALL Marks which have
`
`been in continuous use since their adoption.
`
`-3-
`
`
`
`8. On July 1, 2003, with knowledge of Opposer and its pending trademark
`
`applications, Applicant, alleging itself to be an organization existing under Texas law,
`
`filed an application alleging continuous and exclusive use in the United States Patent
`
`and Trademark Office, Serial No. 76/526571 for registration on the Principal Register
`
`of App|icant’s purported USA FOOTBALL mark for “education and entertainment
`
`services, namely youth football exhibitions, seminars and clinics for youth in the field
`
`of football, and sports events, namely football; providing sports and entertainment
`
`information in the nature of news releases, and publicity and promotional
`
`presentations via a global computer network or on-line service”. In prosecution of the
`
`application for trademark registration, Applicant has filed an affidavit of use under 15
`
`U.S.C. §1052(f).
`
`9. On October 29, 2003, the National Football League and Opposer, USA
`
`Football, lnc., filed a Declaratory Judgment Complaint in the United States District
`
`Court for the Southern District of Texas, Houston Division against Timothy B.
`
`Robinson, the principal of Applicant, seeking, among other things, a declaration that
`
`Opposer’s use of the words “USA Football” did not infringe or dilute the rights — if any
`
`-- possessed by Robinson, did not constitute a false designation of origin and did not
`
`constitute unfair competition (the “District Court Litigation”). On March 30, 2004, the
`
`NFL and Opposer amended their complaint to add Applicant as a named party. On
`
`April 14, 2004, Robinson and Applicant filed a Counterclaim for federal and state
`
`trademark infringement and unfair competition against the NFL and Opposer under
`
`the Lanham Act.
`
`
`
`Specification of Grounds for Opposition
`
`10. The NFL and Opposer sought and received summary judgment on all
`
`issues relevant to this proceeding in the District Court Litigation. The attached
`
`Memorandum and Order and Final Judgment, Exhibit B and Exhibit C hereto,
`
`respectively, were issued on September 20, 2004 by the Honorable Nancy F. Atlas,
`
`United States District Judge.
`
`11.
`
`In this Memorandum and Order, which contains the findings of fact and
`
`conclusions of law, the Court held that Applicant’s use of the designation, USA
`
`FOOTBALL, is “properly classified as descriptive”. Memorandum and Order at pp. 16
`
`and 37. This holding is preclusive of Applicant’s ability to argue the contrary before
`
`the Trademark Trial and Appeal Board (the “Board”).
`
`12.
`
`In the Memorandum and Order, the Court further held that, as of
`
`September 20, 2004, Applicant had created no secondary meaning in the designation
`
`USA FOOTBALL. Memorandum and Order at pp. 26-33 and 37-38. This holding is
`
`preclusive of Applicant’s ability to argue to the contrary before the Board.
`
`13.
`
`In the Memorandum and Order, the Court further held that, as of
`
`September 20, 2004, Applicant has made no use in commerce of Applicant’s USA
`
`FOOTBALL mark on or in connection with services capable of trademark
`
`significance. Memorandum and Order at pp. 37-38 and Final Judgment. As a
`
`consequence, Applicant has made no use of USA FOOTBALL capable of trademark
`
`significance prior to Opposer’s first use date.
`
`
`
`14. Further, the Court specifically held that it was undisputed that Applicant
`
`did not even exist as a valid corporate entity on the July 1, 2003 filing date of this
`
`application [and did not even attempt to reinstate itself as a valid corporate entity until
`
`November 10, 2003]. Memorandum and Order at p. 5. Accordingly, the application
`
`seeking registration pursuant to 15 U.S.C. §1052(a)(1) and the affidavit made
`
`purportedly pursuant to 15 U.S.C. §1052(f) contain willfully false and fraudulent
`
`information in violation of 18 U.S.C. §1001.
`
`15. By contrast, commencing prior to July 1, 2003, and any other first use date
`
`upon which Applicant can rely in support for the basis stated in its application, and
`
`continuing to the present, Opposer has secured rights in and has advertised and
`
`othen/vise promoted its Services under Opposer’s USA FOOTBALL Marks.
`
`16. Applicant’s USA FOOTBALL mark so resembles Opposer’s USA
`
`FOOTBALL Marks as to be likely, when applied to Applicant’s services, to cause
`
`confusion, or to cause mistake, or to deceive because members of the public are
`
`likely to believe that such services are approved, endorsed, or sponsored by Opposer
`
`or associated in some way with Opposer.
`
`17. For each of the reasons and grounds referenced and stated above,
`
`Opposer would thereby be injured by the granting to Applicant of a certificate or
`
`registration for Applicant’s mark.
`
`A duplicate copy of this Notice of Opposition is enclosed.
`
`FEE: A check in payment of the required fee is enclosed.
`
`-5-
`
`
`
`Respectfully submitted,
`
`Odin, Feldman & Pittleman, P.C.
`
`pposer
`
`Kevin Oliveira
`
`9302 Lee Highway, Suite 1100
`Fairfax, Virginia 22031
`(703) 218-2100
`(703) 218-2160 (fax)
`
`Date:
`
`éC"(- 4, 1°01
`
`Enclosures
`
`Our Ref. 43842-00004
`
`n:\data\c1ient\43842\00OO4\notice of 0ppositi0n.doc
`
`
`
`CERTIFICATE OF MAILING
`
`I HEREBY CERTIFY that this Notice of Opposition is being deposited with the
`United States Postal Service as Express Mail No. EV283489783US in an envelope
`Pat
`addressed to The Commissioner of Trademarks, United States
`t & Trademark
`Offic
`2900 Crystal Drive, Arlington, Virginia 22202-3513this
`ffipday of
`g
`4
`,2004.
`
` K vin T. Oliveira
`
`Counsel for Opposer
`
`n:\data\c1ient\43842\00004\notice of opposition (final 10404).doc
`
`-8-
`
`
`
`Latest Status Info
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2004-09-21 17:53:37 ET
`
`Serial Number: 78341626
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`USA FOOTBALL
`
`(words only): USA FOOTBALL
`
`Standard Character claim: Yes
`
`Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional
`information and/or making an initial refusal. However, no final determination as to the registrability of the mark has
`been made.
`
`Date of Status: 2004-07-09
`
`Filing Date: 2003-12-16
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 114
`
`Attorney Assigned:
`DEJESUS YSA Employee Location
`
`Current Location: L6R -TMEG Law Office 106 - Review And Amendment
`
`Date In Location: 2004-09-08
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. USA Football, Inc.
`
`Address:
`
`http://tarr.uspto.gov/servlet/tarr?regse1~—-serial&entry=78341626
`
`9/21/2004
`
`
`
`Latest Status Info
`
`page 2 of 3
`
`USA Football, Inc.
`Suite 870 8300 Boone Boulevard
`
`Vienna, VA 22182
`United States
`Legal Entity Type: NON-PROFIT CORPORATION
`State or Country Where Organized: Virginia
`Phone Number: 703-918-0007
`
`International Class: 041
`Educational and entertainment services, namely youth sports programs, sports exhibitions, seminars and sports events;
`providing sports and entertainment information via a global computer network or a commercial on-line service
`First Use Date: 2002-12-05
`First Use in Commerce Date: 2002-12-05
`
`Basis: 1(a)
`
`(NOT AVAILABLE)
`
`(NOT AVAILABLE)
`
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`2004-08-12 - Data Modification Completed
`
`2004-09-08 - Assigned To LIE
`
`2004-08-12 - PAPER RECEIVED
`
`2004-07-09 - Non-final action mailed
`
`2004-07-07 - Case file assigned to examining attorney
`
`2004-01-06 - New Application Entered In Tram
`
`CONTACT INFORMATION
`
`Correspondent
`KEVIN T OLIVEIRA, (Attorney of record)
`
`KEVIN T OLIVEIRA,
`ODIN FELDMAN & PITTLEMAN
`
`http://tarr.uspto.gov/servlet/tarr?regsemseria1&entry=78341626
`
`9/21/2004
`
`
`
`Latest Status Info
`
`9302 LEE HWY STE 1100
`
`FAIRFAX VA 22031-1215
`
`Page 3 of 3
`
`9/21/2004
`http://tarr.uspto.gov/servlet/tarr?regser=seria1&entry=7 8341626
`L
`
`
`
`Latest Status Info
`
`Page 1 of 3
`
`Thank you for your request. Here are the latest results from the _T_A_R_R_web server.
`
`This page was generated by the TARR system on 2004-09-21 17:53:49 ET
`Serial Number: 78341632
`
`1
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
` USE
`
`Football
`
`(words only): USA FOOTBALL
`
`Standard Character claim: No
`
`Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional
`information and/or making an initial refusal. However, no final determination as to the registrability of the mark has
`been made.
`
`Date of Status: 2004-07-09
`
`Filing Date: 2003-12-16
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 114
`
`Attorney Assigned:
`DEJESUS YSA Employee Location
`
`Current Location: L6R -TMEG Law Office 106 — Review And Amendment
`
`Date In Location: 2004-09-08
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. USA Football, Inc.
`
`Address:
`
`http://tarr.uspto.gov/servlet/tarr?regser=se1ial&entry=78341632
`
`9/21/2004
`
`
`
`Latest Status Info
`
`page 2 of 3
`
`USA Football, Inc.
`Suite 870 8300 Boone Boulevard
`
`Vienna, VA 22182
`United States
`
`Legal Entity Type: NON-PROFIT ORGANIZATION
`State or Country Where Organized: Virginia
`Phone Number: 703-918-0007
`
`GOODS AND/OR SERVICES
`
`International Class: 041
`Educational and entertainment services, namely youth sports programs, sports exhibitions, seminars and sports events;
`providing sports and entertainment information via a global computer network or a commercial on-line service
`First Use Date: 2003-03-01
`First Use in Commerce Date: 2003-03-01
`
`Basis: 1(a)
`
`Description of Mark: The mark consists of The words "USA Football" with an image of a football with stars and
`stripes.
`
`ADDITIONAL INFORMATION
`
`(NOT AVAILABLE)
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`2004-08-12 - Data Modification Completed
`
`2004-09-08 - Assigned To LIE
`
`2004-08-12 - PAPER RECEIVED
`
`2004-07-09 - Non-final action mailed
`
`2004-07-07 - Case file assigned to examining attorney
`
`2004-01-06 - New Application Entered In Tram
`
`CONTACT INFORMATION
`
`Correspondent
`KEVIN T OLIVEIRA, (Attorney of record)
`
`KEVIN T OLIVEIRA,
`
`http://tarr.uspto.gov/servlet/tarflregsemserial&entry=78341632
`
`9/21/2004
`
`
`
`
`Latest Status Info
`Page 3 of 3
`
`ODIN FELDMAN & PITTLEMAN
`
`9302 LEE HWY STE 1100
`
`FAIRFAX VA 2203 1- 1215
`
`http://tarr.uspto.gov/servlet/tarr?regse1=seria1&entry=78341632
`
`9/21/2004
`
`
`
`EXHIBIT
`
`g
`
`B
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF TEXAS
`
`HOUSTON DIVISION
`
`USA FOOTBALL, INC., et al.
`
`Plaintiffs/Counterdefendants,
`
`v.
`TIMOTHY B. ROBINSON,
`
`USA FOOTBALL, INC.,
`
`Defendants/Counterplaintiffs.
`
`§
`
`E
`g
`g
`
`§
`
`2
`
`CIVIL ACTION NO. H-03-4858
`
`MEMORANDUM AND ORDER
`
`This trademark infringement case is before the Court on Plaintiffs USA Football, Inc.
`
`and National Football League’s Motion for Summary Judgment (collectively “NFL”) [Doc.
`
`# 41], and Memorandum in support thereof [Doc. # 42]. Defendants Timothy B. Robinson
`
`and USA Football, Inc. (collectively, “Robinson”‘) filed a Response [Doc. # 50], and
`
`Memorandum in support thereof [D oc. # 5 1 ] .2 Robinson has also moved to strike Affidavits
`
`submitted by the NFL in support of summary judgment [Doc. # 61], and the NFL has
`
`responded [Doc. # 62]. Also before the Court are the NFL’s Motion [Doc. # 53] and
`
` ‘
`
`Because a party on each side refers to itself as USA Football, lnc., and because Robinson,
`although nominally the Defendant,
`is the party bearing the burden of proof on his
`infringement counterclaim, the Court will use the names NFL and Robinson, instead of
`Plaintiff and Defendant, to identify the parties.
`
`2
`
`Also before the Court is Robinson’s Appendix of Exhibits [Doc. # 52] submitted in
`opposition to summary judgment.
`
`P:\0RDERS - PDI'\2003\4858sjandsa1cliunsrn&o.wpd
`
`040920.l022
`
`
`
`Supplemental Motion [Doc. # 63] for sanctions, and Robinson’s Cross-Motion for Sanctions
`
`[Doc. # 58]. Having considered the parties’ submissions, all matters of record, and
`
`applicable legal authorities, the Court concludes that the NFL’s Motion for Summary
`
`Judgment should be granted, Robinson’s Motion to Strike should be denied in part and
`
`granted in part, and all Motions for Sanctions should be denied.
`
`II.
`
`PROCEDURAL AND FACTUAL BACKGROUND
`
`This case arises out of the parties’ claims to use of the trademark “USA Football.”
`
`Robinson is an individual currently residing in Bowie, Texas, who alleges he created the
`
`name USA Football in 1993 for his idea to organize amateur American football players to
`
`play games against international competition in order to promote the game of amateur
`
`American-style football around the world.’ From 1993 to 1997, Robinson worked with an
`
`organization called Coaches Care, Inc., and an organization called Arizona Gridiron, to
`
`organize and coach an annual game in Australia between players from the United States and
`
`Australia.‘ The United States players wore jerseys in at least some of these games with the
`
`logo “USA Football.” In 1997, Robinson and Arizona Gridiron organized a game against
`
`the Spanish National team in Barcelona. Robinson testifies that while in Spain, the group
`
`toured other cities and conducted clinics.
`
`In November 1997, Robinson and a partner,
`
` .:__:
`
`3
`
`4
`
`The following facts regarding Robinson’s USA Football organization are taken from the
`Affidavit of Timothy Robinson (“Robinson Affidavit”), Appendix to Response, Tab 13,
`unless otherwise noted.
`
`See also Declaration of Morris McCauley Clark, Jr. (“Clark Declaration”), Appendix to
`Response, Tab 1; Declaration of Douglas Clapp (“Clapp Declaration”) [Doc. # 46], 1] 6.
`
`P:\0RDERS - PDF\2003\4858sjandsmctionsm&o.wpd
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`040920.l022
`
`2
`
`
`
`Donald Carlson, who is not a party to this case, formed the Texas corporation USA Football,
`
`Inc. Robinson and Carlson printed business cards and merchandise with the USA Football
`
`name and created a promotional video for use in a USA Football booth at clinics, such as the
`
`“Nike Clinic” in Texas. Robinson bought an ad in the 1998 edition of Texas Football
`
`Magazine seeking players, coaches, and staff for games in countries such as Italy, Spain,
`
`New Zealand, Australia, and France. Also in 1998, Robinson contacted the European
`
`Federation of American Football (“EFAF”) and introduced his USA Football organization.
`
`Robinson hoped to promote his USA Football as the official organization for amateur
`
`football in the United States in order to gain recognition from international organizations
`
`such as the EFAF.
`
`In 1998, Patrick Steinberge invited Robinson to join the board of the Football
`
`Federation USA (“FFUSA”), which was formed to facilitate sending a United States team
`
`to the 1999 World Cup. Robinson had met Steinberge while in Spain in 1997. Steinberge
`
`is President of Global Football, which is a partner with the NFL in the annual “NFL Global
`
`Junior Championships” played during Super Bowl week. Also in 1998, Robinson took a
`
`team of Americans to Spain to play the Spanish National Team in B arcelona in an event titled
`
`the “Mediterranean Bowl.” USA Football also played a game in Australia in 1998, and that
`
`same year Robinson traveled to Mexico on a scouting trip.
`
`In January 1999, the FFUSA was invited into membership in the International Federal
`
`of American Football (“IFAF”). The IFAF invited FFUSA to send a team to participate in
`
`P:\ORDERS - PD!-\2003\48S8sjandsanctionsm&o.w'pd
`
`0409201022
`
`3
`
`
`
`the 1999 World Cup as the official representative of United States amateur football. The
`
`FFUSA scheduled two games, in Germany and Italy, but they were cancelled due to the
`
`crisis in Kosovo. Robinson and Steinberge worked quickly to organize replacement games
`
`in Australia and New Zealand. Robinson served only one year on the FFUSA board and his
`
`term was not renewed.
`
`In 2000, Robinson, through USA Football, hosted a team from Australia for two
`
`weeks in Texas and arranged a game to benefit the family of a Texas state trooper killed in
`
`the line of duty and a game against Southwestern Assemblies of God University. These
`
`games were covered in the local press. In 2001, Robinson arranged for representatives from
`
`Germany to tour Texas and attend Mack Brown’s football clinic in Austin, Texas.5 The
`
`German representatives invited Robinson to Germany to evaluate players for a possible
`
`future game. Robinson also traveled to Puerto Rico in 2001 for the same purpose. There
`
`were no USA Football games played in 2001.
`
`In 2002, Robinson organized a game against the Bahamas National Team that was
`
`played at the Citrus Bowl Complex in Orlando, Florida. In 2003, Robinson organized a game
`
`against the Bahama National Team in Nassau. There is no evidence of any USA Football
`
`activities by Robinson in 2004, other than a vague reference to “games pending” against
`
`several Latin American countries as well as the Bahamas.
`
` 5
`
`Mack Brown is the current head football coach at the University of Texas in Austin.
`
`P:\ORDERS - PDE\2003\4858sjandsmctionsm&o.wpd
`
`040920.l022
`
`4
`
`
`
`Robinson’s USA Football organization has never generated a profit. The best year
`
`was 1997-98, when Robinson estimates it generated approximately $185,000, though it had
`
`a $55,000 loss for the year. In 1999, the company generated approximately $90,000 in total
`
`receipts. The company had “very little income” in 2000 and none in 2001. The franchise tax
`
`returns for 2002 and 2003 reflect no revenue for those years, although Robinson testified to
`
`about $12,000 income in each ofthose years.“
`
`Robinson has no corporate records for the corporation USA Football, and never filed
`
`a tax return for the company.7 The corporation’s charter was revoked in 2000 for failure to
`
`pay state franchise taxes, but after filing this case, the corporation was reinstated. However,
`
`Robinson has produced no signed franchise tax returns and Robinson is unsure whether
`
`returns have ever been fi1ed.8 The corporation has never had its own office, using as
`
`addresses over the years Carlson’s car dealership, “Mail Boxes, Etc.” type establishments,
`
`and Robinson’s home or workplace? Robinson has had a series of full time jobs apart from
`
`6
`
`7
`
`8
`
`9
`
`See Exhibit C to Declaration of Jessica L Margolis (“Margo1is Declaration”) [Doc. # 5 5];
`May 12, 2004 Deposition ofTimothy B. Robinson (“Robinson Deposition”), at 161-67, 174,
`187; Franchise Tax Returns, Exhibits E and F to Margolis Declaration.
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`Id. at 112-13, 170, 189-91.
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`Id. at 182.
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`Id. at 128.
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`5
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`USA Football for most of the relevant period, although as of the time of his deposition he
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`was unemployed.”
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`In December 2002, the NFL in conjunction with the NFL Players Association and
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`others formed a non-profit association called USA Football to promote the sport of amateur
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`football at the high school and youth level in the United States. After learning of the NFL’s
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`plans, Robinson sent an e-mail to David Proper, an NFL lawyer, notifying him of Robinson’s
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`prior use of the name." Proper responded that he was not aware ofRobinson’s organization,
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`but expressed an interest in getting more information and exploring possible ways the two
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`groups could work together to promote football.” Robinson followed up with an e-mail
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`attaching a few news articles about his organization, and Proper again requested more
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`information.” The NFL did not hear further from Robinson until July 2003 , when Robinson
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`sent an e-mail demanding that the NFL “cease and desist” from using the mark USA
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`Football.” Robinson’s counsel followed in October 2003 with a “settlement demand”
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`seeking $20 million and 5% royalties on events and merchandise bearing the name.”
`
`
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`‘°
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`“
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`‘2
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`”
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`”
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`'5
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`Id. at 23-24.
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`Declaration ofDavid M. Proper (“Proper Declaration”) [Doc. # 43], 11 8; Robinson Affidavit,
`11 5 1.
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`Id.
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`Proper Declaration, 1] 9 and Exhibit C thereto.
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`Proper Declaration, 11 10; Robinson Affidavit, 11 52.
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`Proper Declaration, 11 11 and Exhibit G thereto.
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`040920.l022
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`6
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`The NFL filed their Declaratory Judgment Complaint on October 29, 2003 [Doc. # 1].
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`After the Declaratory Judgment Complaint was filed but before Robinson was served,
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`Robinson’s purported company USA Football, Inc. filed a trademark infringement suit
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`against Plaintiff USA Football, Inc. and the NFL in the United States District Court for the
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`Southern District of Texas, Victoria Division. The later-filed case pending in the Victoria
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`Division (Civil Action No. V-03-132) was consolidated into the current action. After apre-
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`trial conference in this Court on March 30, 2004, the NFL filed an Amended Declaratory
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`Judgment Complaint seeking a declaration that its use of the trademark “USA Football” does
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`not infringe or dilute any trademark rights of Robinson, does not constitute a false
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`designation of origin, and does not constitute unfair competition. Robinson filed a
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`Counterclaim for federal trademark infringement under the Lanham Act, 15 U.S.C. § 1125
`
`et seq., and state law trademark infringement under Texas Business and Commerce Code
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`§ 16.29, and Lanham Act unfair competition. The NFL now seeks summaryjudgment on all
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`issues in this case.
`
`Robinson argues that the crux of this entire case is that “[t]he football games, clinics,
`
`promotional and recruiting efforts, and other activities of the ‘USA Football’ organization
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`have been continuous since 1993, both before and after incorporation [in l997], and have
`
`involved literally thousands of spectators, players, coaches and other participants?“ While
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`the evidence clearly establishes that Robinson, alone or in conjunction with others, has used
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`
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`Response, at 5 and n.2,
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`the name USA Football in connection with the promotion of amateur American-style football
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`internationally, the evidence of record does not support Robins0n’s characterization of the
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`continuity, extent or success of his USA Football organization.
`
`II.
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`SUMMARY JUDGMENT STANDARDS
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`Rule 56 of the Federal Rules of Civil Procedure mandates the entry of summary
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`judgment, after adequate time for discovery and upon motion, against a party who fails to
`
`make a sufficient showing of the existence of an element essential to the party’s case, and
`
`on which that party will bear the burden at trial. Baton Rouge Oil and Chem. Workers Union
`
`v. ExxonMobz'l Corp., 289 F.3d 373, 375 (5th Cir. 2002) (quoting Celotex Corp. v. Catrett,
`
`477 U.S. 317, 322 (1986)).
`
`In deciding a motion for summary judgment, the Court must determine whether “the
`
`pleadings, depositions, answers to interrogatories, and admissions on file, together with the
`
`affidavits, if any, show that there is no genuine issue as to any material fact and that the
`
`moving party is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(c); Celotex
`
`Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Calbillo v. Cavender Oldsmobile, Inc., 288
`
`F.3d 721, 725 (5th Cir. 2002). An issue is material if its resolution could affect the outcome
`
`ofthe action. Terrebonne Parish Sch. Bd. v. Columbia GulfTransmission C0., 290 F.3d 303,
`
`310 (5th Cir. 2002) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).
`
`In
`
`deciding whether a fact issue has been created, the facts and the inferences to be drawn from
`
`them must be reviewed in the light most favorable to the nonmoving party. Hotard v. State
`
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`040920.l022
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`8
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`
`
`Farm Fire & Cas. Co., 286 F.3d 814, 817 (5th Cir. 2002). However, factual controversies
`
`are resolved in favor of the nonmovant “only when there is an actual controversy
`
`that is,
`
`when both parties have submitted evidence of contradictory facts.” Olabisiomotosho v. City
`
`ofHouston, 185 F.3d 521, 525 (5th Cir. 1999).
`
`The party moving for summary judgment has the initial burden of demonstrating the
`
`absence of a material fact issue with respect to those issues on which the movant bears the
`
`burden ofproofat trial. Smith v. Brenoettsy, 158 F.3d 908, 911 (5th Cir. 1998). The movant
`
`meets this initial burden by showing that the “evidence in the record would not permit the
`
`nonmovant to carry its burden of proof at trial.” Id. If the movant meets this burden, the
`
`nonmovant must go beyond the pleadings and designate specific facts showing that there is
`
`a genuine issue for trial. Littlefield v. Forney Indep. Sch. Dist., 268 F.3d 275, 282 (5th Cir.
`
`2001) (quoting Tubacex, Inc. v. M/V Risan, 45 F.3d 951, 954 (5th Cir. 1998)). A dispute
`
`over a material fact is genuine if the evidence is such that a reasonable jury could return a
`
`verdict for the nonmoving party. Id. (quoting Smith v. Brenoettsky, 158 F.3d 908, 911 (5th
`
`Cir. 1998)); see also Quorum Health Resources, L.L.C. v. Maverick County Hosp. District,
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`308 F.3d 451, 458 (5th Cir. 2002).
`
`The nonmovant’s burden is not met by mere reliance on the allegations or denials in
`
`the nonmovant’s pleadings. See Morris v. Covan Worldwide Moving, Inc., 144 F.3d 377, 380
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`(5th Cir. 1998); Diamond Offshore Co. v. A&B Builders, Inc., 302 F.3d 531, 545 n.l3 (5th
`
`Cir. 2002) (noting that “unsworn pleadings do not constitute proper summary judgment
`
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`0409201022
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`9
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`
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`evidence,” quoting Johnston v. City of Houston, 14 F.3d 1056, 1060 (5th Cir. 1994)).
`
`Likewise, “unsubstantiated or conclusory assertions that a fact issue exists” do not meet this
`
`burden. Morris, 144 F.3d at 3 80. Instead, the nonmoving party must present specific facts
`
`which show “the existence of a ‘genuine’ issue concerning every essential component of its
`
`case.” Id. In the absence of any proof, the court will not assume that the nonmovant could
`
`or would prove the necessary facts. McCallum Highlands, Ltd. v. Washington Capital Dus,
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`Inc., 66 F.3d 89, 92 (5th Cir. 1995), revised on other grounds upon denial ofreh ’g, 70 F.3d
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`26 (5th Cir. 1995); Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (citing
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`Lujan v. Nat’l Wildlife Fed ’n, 497 U.S. 871, 888 (1990)).
`
`III. ANALYSIS
`
`The NFL argues that Robinson cannot prevail on his claims for trademark
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`infringement or unfair competition because he has no protectable trademark rights in the
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`name “USA Football”.” Specifically, the NFL argues that Robinson’s use of the name
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`“USA Football” has been de minimis. In addition, the NFL contends that Robinson’s use of
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`“USA Football” has not been exclusive, nor was he first the use the name. The NFL further
`
`contends that the trademark “USA Football” is descriptive, and therefore is entitled to
`
`‘7
`
`The requirements for common law trademark infringement under Texas law are the same as
`under federal trademark law. All American Builders, Inc. v. All American Siding ofDallas,
`Inc., 991 S.W.2d 484, 488 (Tex. App. Fort Worth 1999, no pet.); Sport Supply Group, Inc.
`v. Columbia Cas. Co., 335 F.3d 453, 461 (5th Cir. 2003); Blue Bell, Inc. v. Farah Mfg. Co.,
`508 F.2d 1260, 1264 (5th Cir. 1975) (concluding that in applying the Texas trademark statute
`the Texas Supreme Court would apply general principles of trademark law).
`
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`1 O
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`protection only if it has acquired secondary meaning.” Because Robinson has no evidence
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`of secondary meaning, according to the NFL, his claims cannot survive summary judgment.
`
`Robinson asserts that his use of the trademark “USA Football” is real and not so de
`
`minimis as to be unworthy of protection. Robinson further argues that the trademark “USA
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`Football” is suggestive, not descriptive, and does not require secondary meaning to be
`
`protected. Finally, Robinson argues that, if secondary meaning is required, the affidavits and
`
`media reports he has submitted create a genuine issue of material fact as to whether the name
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`“USA Football” has acquired a secondary meaning associated with Robinson.
`
`In the
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`alternative, Robinson argues that he needs more time to conduct discovery in order to gather
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`secondary meaning evidence, including, possibly, a consumer survey.
`
`A.
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`Trademark Law
`
`In order to succeed on a claim of trademark infringement Robinson must show that
`
`he is the holder of a protected trademark for USA Football, that the NFL is not authorized
`
`to use the trademark, and that the NFL’s use of the trademark is likely to cause confusion that
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`will cause injury to Plaintiff’ s trademark rights. Union Nat ’l Bank of Texas, Laredo, Texas
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`v. Union Nat '1 Bank ofTexas, Austin, Texas, 909 F.2d 839, 844 (5th Cir. 1990); McDonala"s
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`Corp. v. Robertson, 147 F.3d 1301, 1307 (11th Cir. 1998) (“in order to prevail on a
`
`
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`While the NFL presents these three theories as independent bases for summary judgment,
`they are closely related concepts. Because the issue of secondary meaning is dispositive in
`this case, the Court considers the nature and extent of Robinson’s use of the mark “USA
`Football” in connection with the detennination of secondary mea
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