Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA641896
`ESTTA Tracking number:
`12/01/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Major League Soccer, L.L.C.
`11/30/2014
`
`420 Fifth Avenue
`New York, NY 10018
`UNITED STATES
`
`Attorney informa-
`tion
`
`Deborah L. Shapiro
`Moses & Singer LLP
`405 Lexington Avenue12th Floor
`New York, NY 10174-1299
`UNITED STATES
`trademarks@mosessinger.com, dshapiro@mosessinger.com
`Phone:212-554-7800
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85959138
`12/01/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`06/03/2014
`11/30/2014
`
`Intelisport Inc.
`19495 Biscayne Blvd., Suite 800
`Aventura, FL 33180
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 016. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: printed matter, namely, posters, stickers,
`trading cards, event programs, tickets and magazines featuring soccer
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: apparel, namely, t-shirts, shorts, pants,
`jackets, sweatshirts, hats, sweaters and footwear
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: entertainment services, namely, organizing,
`conducting and staging professionalsoccer games and exhibitions; production of radio and television
`programs in the nature of professional soccer games and exhibitions
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`

`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`MIAMI FUSION F.C.
`Fitted plastic films known as skins for covering and providing a
`scratch proof barrier or protection for electronic devices, namely, MP3
`players, mobile telephones, smart telephones, digital cameras, global
`positioning systems and personal digital assistants, but excluding
`game apparatus; computer and video game software and programs;
`magnets; pre-recorded DVDs and pre-recorded video tapes in the
`field of soccer; downloadable video clips from soccer games via mo-
`bile communication devices posters; decals; trading cards; stickers;
`bumper stickers; printed paper signs; printed media guides relating to
`a professional soccer team; souvenir soccer programs; yearbooks in
`the field of soccer; printed event admission tickets; photo prints;
`magazines featuring information in the field of soccer; paper napkins
`t-shirts; fleece tops; jerseys; hats; caps; visors; beanies; shorts; sweat
`suits; jackets; hooded sweatshirts; scarves, socks, headbands, wrist-
`bands, baby bibs not of paper, infant and toddler one piece clothing
`Bendable modeled plastic toy figurines, soccer ball bags, soccer balls,
`plush toy animals, hand-held unit for playing video games other than
`those adapted for use with an external display screen or monitor; die
`cast scale model trucks, scale model trucks, shin guards for athletic
`use, bobble head dolls, playing cards. toy figurines; soccer ball bags;
`soccer balls; plush toy animals; puzzles; toy foam novelty items,
`namely, foam heads and foam fingers; foosball tables; golf accessor-
`ies, namely, golf balls, golf bags, carriers and dispensers for golf
`balls, divot repair tools, bag tags, ball marks, tees, gloves Entertain-
`ment services, namely, organizing live soccer exhibitions rendered
`live in a stadium, and providing continuing programs featuring soccer
`events broadcast over television, radio and via the internet; provision
`of entertainment in the nature of non-downloadable pre-recorded
`video clips from soccer games, presented to mobile communication
`devices via a global computer network and wireless networks; provi-
`sion of information in the field of soccer via the internet and mobile
`devices.
`
`Attachments
`
`Notice of Opposition MIAMI FUSION FC 85959138.pdf(64109 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Deborah L. Shapiro/
`Deborah L. Shapiro
`12/01/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 85/959,138
`For the mark: MIAMI FUSION F.C.
`Published in the Official Gazette on June 3, 2014
`
`MAJOR LEAGUE SOCCER, L.L.C..,
`
`-against-
`
`INTELISPORT INC.,
`
`Opposer,
`
`Opposition No. _________
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer, Major League Soccer, L.L.C., a limited liability company organized and
`
`existing under the laws of Delaware, having its principal place of business at 420 Fifth
`
`Avenue, New York, New York, believes that it will be damaged by the registration of the
`
`designation MIAMI FUSION F.C. that is the subject of Application Serial No.
`
`85/959,138, and hereby opposes the same pursuant to Section 13(a) of the Trademark Act
`
`of 1946, as amended (the “Lanham Act”), 15 U.S.C. § 1063(a).
`
`As grounds for its opposition, Opposer, by its attorneys Moses & Singer, LLP,
`
`alleges that:
`
`1.
`
`Opposer, Major League Soccer, L.L.C. (“MLS” or “Opposer”), is a
`
`professional soccer league representing the sport’s highest level in the United States and
`
`Canada. MLS was founded in 1996 after the United States hosted the 1994 FIFA World
`
`

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`Cup. MLS began with ten teams in its first season. MLS has expanded tremendously
`
`since its inception; twenty teams will play in the 2015 season.
`
`2.
`
`For many years, and long before June 13, 2013, the filing date of the
`
`application herein opposed, MLS used MIAMI FUSION F.C. as a trademark (the
`
`“MIAMI FUSION F.C. Mark”) for its professional soccer team, and for goods and
`
`services related to the promotion of the team and the league.
`
`3.
`
`In 1997, MLS announced its first expansion beyond the ten founding
`
`teams. One of the two expansion teams was MIAMI FUSION F.C. MIAMI FUSION
`
`F.C. began play in the 1998 season in MLS’s first soccer-specific stadium. MIAMI
`
`FUSION F.C. recruited top talent, and in 2001 won the MLS Supports’ Shield, an annual
`
`award given to the MLS team with the best regular season record.
`
`4.
`
`By virtue of its use in interstate commerce since at least 1997, MLS owns
`
`common law trademark rights throughout the United States for the MIAMI FUSION F.C.
`
`Mark, and MLS has maintained goodwill in the MIAMI FUSION F.C. Mark.
`
`5.
`
`Although the original MIAMI FUSION F.C. team stopped playing, the
`
`relevant consumers continue to recognize the MIAMI FUSION F.C. Mark as associated
`
`with MLS.
`
`6.
`
`In November 2012, MLS commissioner Don Garber confirmed that a new
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`expansion team would come to Miami. Discussions and negotiations took place through
`
`2013, culminating in a formal announcement in February 2014 that soccer legend David
`
`Beckham would exercise his option for ownership of an MLS expansion team in Miami.
`
`7.
`
`On June 13, 2013, Applicant filed its intent-to-use application for MIAMI
`
`FUSION F.C. under Serial No. 85/959,138 for “printed matter, namely, posters, stickers,
`
`2
`
`

`
`trading cards, event programs, tickets and magazines featuring soccer” in Class 16,
`
`“apparel, namely, t-shirts, shorts, pants, jackets, sweatshirts, hats, sweaters and footwear”
`
`in Class 25, and “entertainment services, namely, organizing, conducting and staging
`
`professional soccer games and exhibitions; production of radio and television programs
`
`in the nature of professional soccer games and exhibitions” in Class 41 (the
`
`“Application”).
`
`8.
`
`The goods services listed in the Application are so closely related to the
`
`goods and services MLS offers, as to be likely to cause confusion, to cause mistake, and
`
`to deceive the trade and public, who are likely to associate the goods and services offered
`
`by Applicant with those offered by MLS, or to believe that Applicant’s goods are
`
`sponsored, endorsed or licensed by MLS, or that there is some relationship between
`
`Applicant and MLS.
`
`9.
`
`Applicant’s designation MIAMI FUSION F.C. is identical to MLS’s
`
`MIAMI FUSION F.C. Mark.
`
`10.
`
`The Application states an intent-to-use the MIAMI FUSION F.C.
`
`designation for identical or closely related goods and services as MLS’s goods and
`
`services in channels of trade and market segments identical or closely related to those in
`
`which MLS offers its goods and services.
`
`11.
`
`There is already evidence of confusion resulting from the mere filing of
`
`the Application. After the Beckham announcement in February 2014, there were reports
`
`in the soccer media that the new MLS team would be named Miami Fusion F.C., pointing
`
`to the Application as evidence. This is indicative of confusion.
`
`3
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`

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`12. MLS will be damaged by the registration sought by Applicant because
`
`such a registration would support and assist Applicant in making confusing and
`
`misleading use of the mark sought to be registered, and would give color of exclusive
`
`statutory rights to Applicant in violation and derogation of the prior and superior rights of
`
`MLS.
`
`13.
`
`Registration should be refused pursuant to Section 2(a) of the Lanham
`
`Act, 15 U.S.C. § 1052(a), on the grounds that Applicant’s use and registration of the
`
`MIAMI FUISION F.C. designation will falsely suggest a connection between Applicant
`
`and MLS, to the damage of MLS.
`
`14.
`
`Registration should be refused pursuant to Section 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d), on the grounds that Applicant’s MIAMI FUSION F.C.
`
`designation so closely resembles MLS’s MIAMI FUSION F.C. Mark as to be likely,
`
`when used on or in connection with the goods and services identified in the applications,
`
`to cause confusion, or to cause mistake, or to deceive, with consequent injury to MLS and
`
`to the public.
`
`WHEREFORE, MLS believes it will be damaged by the registration by Applicant
`
`of the designation MIAMI FUSION F.C. for the goods and services identified in
`
`Application Serial No. 85/959,138 and respectfully requests that this Opposition be
`
`sustained in favor of MLS and registration of Applicant’s designation be denied.
`
`Pursuant to 37 C.F.R. § 2.6(a)(17), please charge Deposit Account Number 50-
`
`3326 the requisite amount of $600 and any additional amounts to cover the statutory
`
`filing fee.
`
`4
`
`

`
`Dated: New York, New York
` December 1, 2014
`
`Respectfully submitted,
`
`MOSES & SINGER LLP
`
`___/Deborah L. Shapiro/_________
`
`Deborah L. Shapiro
`David Rabinowitz
`405 Lexington Avenue
`New York, New York 10174-1299
`(212) 554-7800
`
`Attorneys for Opposer
`Major League Soccer, L.L.C.
`
`5
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that on the 1st day of December, 2014, I caused a true copy of the
`attached Notice of Opposition to be served on counsel of record for Applicant Intelisport
`Inc., by sending same via first class mail to Applicant’s counsel at the following address:
`Mark D. Passler, Esq.
`Akerman LLP
`P.O. Box 3188
`West Palm Beach, Florida 33402-3188
`
`_______/Deborah L. Shapiro/___________
` Deborah L. Shapiro