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. As a result, if an owner abandons its trademark, the owner cannot prevent newcomers from coming along and bringing the trademark back to life. 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”). The USFL featured legendary players such a Herschel Walker, Jim Kelly, Steve Young, Doug Flutie, Reggie White, and enjoyed moderate success. However, the business model crashed in 1986.
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 logos—despite it having no connection with the original USFL.
Fox Sports planned to air its inaugural game on April 16, 2022. 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. 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 significant.
The court determined that The Real USFL was likely to succeed on a claim of trademark infringement. 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. 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 business.
Should you have any questions about trademark abandonment or need assistance keeping your trademarks in use, please contact us.
 Id. at 1289 (quoting 15 U.S.C. § 1127).
 Jerome Gilson & Anne Gilson LaLonde, The Zombie Trademark: A Windfall and a Pitfall, 98 TRADEMARK REP. 1280, 1281 (2008).
 Complaint at 5, The Real USFL, LLC v. Fox Sports, Inc., (C.D. Cal 2022) (No. 2:22cv1350).
 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, https://www.sportingnews.com/us/nfl/news/original-usfl-herschel-walker-donald-trump-nfl-lawsuit/hvenfteztha4atfu4tgcuvyk.
 Id. at 15.
 Id. at 12.
 Id. at 27.
 Id. at 27-36.
 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.
 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).
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