Liverpool FC hope to score in TM infringement case
UK-based Liverpool Football Club (LFC) is taking on US-based Red Slopes Soccer Foundation in a trademark infringement (pdf) case.
LFC filed their complaint at the US District Court for the Eastern District of Texas Sherman Division on Tuesday, April 10.
The football club have registered their crest and logo as trademarks in the US under numbers 3,307,401; 3,867,538; and 4,910,692 (crest), and numbers 4,169,888 and 4,910,693 (logo).
The logo is made up of a red liver bird—a fictional bird associated with the city of Liverpool—with the letters ‘LFC’ underneath. The crest also features a red liver bird under the words ‘Liverpool Football Club’.
LFC granted Liverpool America the right to sub-license its trademarks for the purpose of operating youth football programmes (expansion clubs) in the US.
In October 2016, Liverpool America entered into an agreement with Red Slopes Soccer Foundation and its affiliate, Red Slopes Soccer. The agreement established Red Slopes Soccer as an expansion club.
As a result of the partnership, Red Slopes Soccer began using LFC’s crest and logo to operate as a youth soccer organisation affiliated with the club.
The logos and crest were used on Red Slopes Soccer’s marketing brochures, signage, uniforms, netting, and in its domain name.
However, the claim alleged that after making an initial payment to Liverpool America, Red Slopes “almost immediately repudiated” the agreement. According to the claim, the defendant only made an initial fee.
On August 7, 2017, Liverpool America sent a notice of default to Red Slopes, alleging a debt of more than $73,000.
After the defendant failed to cure the default, Liverpool America terminated the agreement on August 23, 2017 and informed LFC of the termination.
L FC sent Red Slopes a cease and desist letter after it continued to use the trademarks, and issued take-down notices on social media where the defendant shared infringing content.
Red Slopes responded by suing L FC on the grounds that it was suffering, or about to suffer, irreparable harm by LFC’s withdrawal of permission to use its IP in the middle of a football season. The two organisations entered into a settlement that allowed Red slopes to use the trademarks until the end of the “spring 2018 season”.
Despite the “interim nature of the settlement”, Red Slopes allegedly continues to market itself as an affiliate of LFC—specifically using the trademarks.
In retaliation, LFC is suing Red Slopes for trademark infringement and false designation of origin, seeking an injunction and damages.
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