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Keywords

lawsuitmotiontrademarkbad faithdeclaratory judgment
contractbreach of contracttortmotiontrademark

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Federation Internationale De Football Ass’n v. Nike, Inc., 285 F.Supp.2d 64, 68 U.S.P.Q.2d 1849

Facts

The Federation Internationale de Football Association (FIFA) sought to register the trademark 'USA 2003' in connection with the Women's World Cup soccer tournament. After learning that Nike was using a similar phrase, 'USA 03', FIFA sent a cease-and-desist letter and subsequently filed a lawsuit for trademark infringement. FIFA requested a temporary restraining order to prevent Nike from using the phrase during the tournament, which was time-sensitive as the event was ongoing. Nike, not being a World Cup sponsor, filed a declaratory judgment action in New York, leading to FIFA's action in D.C.

In connection with this event, its organizer, the Federation Internationale de Football Association (FIFA), sought to register the trademark 'USA 2003.' Claiming that Nike's use of a similar phrase ('USA 03') in connection with its sponsorship of the U.S. Women's National Soccer Team has infringed upon that trademark and amounts to unfair competition, tortious interference with contractual relations, and breach of contract, FIFA brought the present action.

Issue

Whether FIFA is entitled to a temporary restraining order against Nike for trademark infringement and whether the case should be transferred to New York.

Whether FIFA is entitled to a temporary restraining order against Nike for trademark infringement and whether the case should be transferred to New York.

Rule

A temporary restraining order is an extraordinary remedy that requires the moving party to demonstrate a substantial likelihood of success on the merits, irreparable injury, that it would not substantially injure other parties, and that public interest would be served. Additionally, the first-filed rule generally gives priority to the first suit unless special circumstances justify an exception.

A temporary restraining order is an extraordinary remedy that requires the moving party to demonstrate a substantial likelihood of success on the merits, irreparable injury, that it would not substantially injure other parties, and that public interest would be served.

Analysis

FIFA was unlikely to prevail on the merits of its trademark infringement claim because it failed to show that its descriptive mark 'USA 2003' had acquired secondary meaning, which is necessary for protection. The court found that the mark was weak and that there was no evidence of actual confusion between FIFA's and Nike's marks. Furthermore, the court noted that Nike's use of 'USA 03' was in a different graphical context and did not indicate bad faith. The urgency of FIFA's request for a TRO was acknowledged, but the court concluded that the likelihood of success on the merits was insufficient to grant the order.

FIFA was unlikely to prevail on the merits of its trademark infringement claim because it failed to show that its descriptive mark 'USA 2003' had acquired secondary meaning, which is necessary for protection. The court found that the mark was weak and that there was no evidence of actual confusion between FIFA's and Nike's marks.

Conclusion

The court denied FIFA's motion for a temporary restraining order and also denied Nike's motion to transfer the case to New York.

The court denied FIFA's motion for a temporary restraining order and also denied Nike's motion to transfer the case to New York.

Who won?

Nike prevailed in this case as the court denied FIFA's request for a temporary restraining order. The court found that FIFA was unlikely to succeed on the merits of its trademark infringement claim due to the lack of evidence showing that the mark 'USA 2003' had acquired secondary meaning. Additionally, the court noted that Nike's use of 'USA 03' did not create a likelihood of confusion among consumers, which is a critical element in trademark infringement cases.

Nike prevailed in this case as the court denied FIFA's request for a temporary restraining order. The court found that FIFA was unlikely to succeed on the merits of its trademark infringement claim due to the lack of evidence showing that the mark 'USA 2003' had acquired secondary meaning.

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