Internet Trademark Case Summaries
Federation Internationale de Football Ass'n. v. Nike, Inc.
285 F. Supp. 2d 64 (D.D.C. 2003)
Plaintiff FIFA operates the Women’s World Cup soccer tournament, which was held in the United States in 2003. FIFA filed applications to register the mark “USA 2003.” Although defendant Nike is not a World Cup sponsor, it was a sponsor of the U.S. Women’s National Soccer Team. Nike designed a logo combining its “Swoosh” logo with the phrase “USA 03” and used it on clothing and on Nike’s “usasoccer.com” website. These uses contained no reference to FIFA or the World Cup. FIFA sent a cease-and-desist letter to Nike accusing it of trademark infringement. The parties exchanged letters until Nike sought a declaratory judgment in New York that Nike was not infringing FIFA’s trademark rights. Two days later FIFA filed this action against Nike for trademark infringement and dilution among other claims. FIFA moved for a temporary restraining order, and Nike moved to transfer the case to New York. The court denied Nike’s motion to transfer because the declaratory judgment was sought in anticipation of litigation from plaintiff and because plaintiff’s motion for a TRO was very time sensitive (the World Cup was, at the time, less than two weeks away). The court also denied FIFA’s motion for a TRO, finding that FIFA was unlikely to succeed in establishing infringement or dilution. The court first noted that plaintiff’s mark was not inherently distinctive because it was descriptive. And FIFA failed to establish that “USA 2003” had achieved secondary meaning. FIFA presented neither any evidence regarding the amount of advertising done or products sold under the mark nor any direct evidence of secondary meaning (e.g., consumer surveys and affidavits) And FIFA’s prior use of “country name plus year-of-event marks” for previous World Cup tournaments was not sufficient to establish that consumers would automatically associate “USA 2003” with the 2003 Women’s World Cup. Even assuming FIFA could overcome this lack of secondary meaning, FIFA’s infringement claim failed because plaintiff’s mark was not particularly strong and the marks “differed in significant ways” (i.e., FIFA used USA 2003 as part of a composite mark with the words “FIFA Women’s World Cup” while Nike used USA 03 with its famous swoosh logo). In addition, there was no evidence of actual confusion, no proof that defendant offered inferior products, and no evidence that defendant acted in bad faith. Finally, the court held that FIFA was not likely to succeed on its dilution claim because the mark was not sufficiently distinctive and it had been used for only two months.