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Under the Lanham Act, a trademark is considered abandoned
“when its use has been discontinued with intent not to resume
such use.” Three consecutive years of nonuse constitutes a
prima facie showing of abandonment.1 As a result, if an
owner abandons its trademark, the owner cannot prevent newcomers
from coming along and bringing the trademark back to
life.2 Trademark owners must actively use their marks in
commerce to ensure a third-party will not revive the mark in the
future and benefit from the original owner’s use. The
developing case The Real USFL, LLC v. Fox Sports, Inc.,
demonstrates this concept in full force.
From 1983 to 1985, a group of investors created and ran a
springtime professional football league named the United States
Football League (“USFL”).3 The USFL featured
legendary players such a Herschel Walker, Jim Kelly, Steve Young,
Doug Flutie, Reggie White, and enjoyed moderate
success.4 However, the business model crashed in
On June 3, 2021, Fox Sports announced its plan to bring back the
United States Football League, including eight of the original USFL
team names and logos5—despite it having no connection with
the original USFL.6
Fox Sports planned to air its inaugural game on April 16,
2022.7 In response, The Real USFL commenced suit on
February 28, 2022, in the United States District Court Central
District of California for, among other causes of action, trademark
infringement and unfair competition under the Lanham
Act.8 The Real USFL filed a motion for preliminary
injunction on March 17, 2022 to prevent Fox Sports from moving
forward with the inaugural April 16 game. Although the district
court denied the motion for failure to satisfy its burden for all
elements of a preliminary injunction, the court’s holding is
The court determined that The Real USFL was likely to succeed on
a claim of trademark infringement.10 The Real USFL
demonstrated its use of the disputed trademarks in commerce prior
to Fox Sports’ use through the sale of apparel via a
licensing agreement from October 2011 to December
2021.11 The court determined such use established The
Real USFL’s ownership of the once dead/abandoned trademarks.
The court held that the sale of apparel, in addition to a USFL
reunion hosted by The Real USFL in 2007, an ESPN interview with the
USFL’s chairman in 2008, issuing trademark releases for
various media projects from 2006 to 2016, and management of
royalties from the apparel sales, was enough to demonstrate at
least an intent to use the trademarks in commerce and therefore
sufficed to show ownership in the disputed marks.
Further, the court held that The Real USFL proved likelihood of
confusion between its use and Fox Sports’ use. Although the
motion for preliminary injunction was denied, the court indicated
that The Real USFL may succeed on its trademark infringement action
against Fox Sports.
This case provides a lesson to trademark owners—use in
commerce, including licensing your mark, is vital to the continued
ownership of the mark itself. The Real USFL may not have used its
mark to the fullest extent, but its ownership of the mark may have
been saved. Next time, your neglected trademark might not be so
lucky should a third party determine it may be valuable for their
1. Id. at 1289 (quoting 15 U.S.C. §
2. Jerome Gilson & Anne Gilson LaLonde, The
Zombie Trademark: A Windfall and a Pitfall, 98 TRADEMARK REP.
1280, 1281 (2008).
3. Complaint at 5, The Real USFL, LLC v. Fox Sports,
Inc., (C.D. Cal 2022) (No. 2:22cv1350).
4. The original USFL had a successful debut and signed
solid television deals, but the league failed when it moved the
season from the spring to the fall in an attempt to directly
compete with the NFL. Bill Bender, What happened to the
original USFL?, The Sporting News, April 14, 2022,
5. Id. at 15.
6. Id. at 12.
7. Id. at 27.
8. Id. at 27-36.
10. For a successful trademark infringement claim, a
plaintiff must prove: (1) it has a protectable ownership in the
trademark and (2) the defendant’s use of the trademark is
likely to cause customer confusion. Pursuant to the Lanham Act,
“Federal registration of a trademark is prima facie evidence
that the registrant is the owner of the mark.” However, a
non-registrant can rebut this presumption by showing it used the
trademark in commerce first, which in turn would invalidate the
trademark. Id. at 10.
11. In 2021, Fox Sports sent a cease and desist letter to
American Classics demanding the company to no longer sell USFL
apparel. American Classics complied with Fox’s demands which
led to the original USFL no longer having an online apparel
presence. Complaint at 6, The Real USFL, LLC v. Fox Sports,
Inc., (C.D. Cal 2022) (No. 2:22cv1350).
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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