A federal court in the Middle District of Florida has granted a motion for a preliminary injunction to a sports team owner, who sued another team owner after he tried to use his team name and logos.
In ruling for the plaintiff, the court found that “the balance of hardships favors (the plaintiff) because of the goodwill associated with the (its) marks.”
The plaintiff was Montana Professional Sports (MPS), owner of the Billings Outlaws, a professional indoor football league team. The named defendants were the Leisure Sports Management, Inc., owner of the Kissimmee Outlaws, and the National Indoor Football League.
The previous owner of the Billings Outlaws filed three trademark applications in the U.S. Patent and Trademark Office on January 21, 2001 to register the marks Billings Outlaws and two design marks. Those requests were granted on February 25, 2003.
That owner operated the team under the Outlaws marks from the League’s inaugural season in 2001 through 2004. Further, “the Outlaws Marks are recognized throughout the League and elsewhere as an indication of source for the Billings Outlaws.”
All was fine between the previous team owner of the Billings Outlaws and the defendants until February of 2005 when he had a dispute with the League and informed the League that the Outlaws would not participate in the upcoming season. The court noted, however, that the plaintiff intended to compete again in 2006 in the league or elsewhere and that it continued promoting and selling its merchandise during 2005.
Shortly thereafter, defendant Leisure Sports Management, Inc. purchased the Kissimmee Kreatures, a professional indoor football team in Florida, which plays in the league in the fall of 2005. In an effort “to improve the image for its newly acquired indoor football team, which had experienced some financial difficulties in the past,” LSM adopted a new name for its team, the Osceola Outlaws, and created an accompanying design mark and helmet logo. The National Indoor Football League approved the changes and new marks.
At about the same time, MPS acquired the Outlaws. It “immediately” objected to LSM’s adoption of the Osceola Marks once it learned about the name change at the League meetings in November 2005. However, LSM and the league refused to bend on their previous decisions, spawning the plaintiff’s lawsuit.
In its review, the court noted that the plaintiff must demonstrate a probability of success on the merits of the case to get an injunction. And “a plaintiff’s probability of success on the merits depends on the strength of its trademark infringement claim,” which in turn requires a showing that the plaintiffs “mark was used in commerce by the defendant without the registrant’s consent and that the unauthorized use was likely to deceive, cause confusion, or result in mistake. McDonald’s Corp. v. Robertson. 147 F.3d 1307 (11th Cir. 1998). Once this showing is made, irreparable injury is presumed. Id. at 1310.”
One of the key tests the court used in finding for the plaintiff in the case was a “balance of hardships.”
“The balance of hardships favors MPS because of the goodwill associated with the Outlaws Marks. The Outlaws Marks have been extensively used, promoted and advertised since 2001, including four complete League seasons where the Billings team played as the Billings Outlaws. This goodwill will be harmed if Defendants are allowed to adopt and promote LSM’s team under the confusingly similar Osceola Outlaws trademarks.
“In contrast, LSM’s team has not played a single game as the Osceola Outlaws. Defendants have not presented any specific evidence of monetary harm. Moreover, any recent investment in the Outlaws name and marks by Defendants with full knowledge of MPS’ federally registered Outlaws Marks should not be afforded any weight.”
The court concluded for the plaintiff, and this enjoined the defendants from:
“(a) using the trademark Outlaws and/or any other trademark [*32] which incorporates MPS’ Outlaws mark in connection with the importation, promotion, advertisement, display, marketing, sale, offering for sale, manufacture, production, circulation or distribution of any product or service, including but not limited to professional football games and exhibitions, and men’s, women’s and children’s clothing, in any media, including but not limited to the Internet, other than to promote or refer to MPS and its goods or services, including but not limited to professional football games and exhibitions, and men’s, women’s and children’s clothing;
(b) using design marks that feature a masked cowboy or any other trademark which incorporates MPS’ design marks in connection with the importation, promotion, advertisement, display, marketing, sale, offering for sale, manufacture, production, circulation or distribution of any product or service, including but not limited to professional football games and exhibitions, and men’s, women’s and children’s clothing, in any media, including but not limited to the Internet, other than to promote or refer to MPS and its goods or services, including but not limited to professional football games and exhibitions, and [*33] men’s, women’s and children’s clothing:
(c) using any false designation of origin or false description, including, without limitation, the mark Outlaws and/or any design mark that features a masked cowboy, in any manner which is likely to lead members of the trade or public to believe that any product or service manufactured, advertised, marketed, distributed, sold or provided by LSM is in any manner associated or connected with MPS, or is sold, manufactured, licensed, sponsored, provided, approved or authorized by MPS:
(d) transferring, consigning, selling, shipping or otherwise moving any goods, packaging or other materials in Defendants’ possession, custody or control bearing a mark or design substantially similar to MPS’ Outlaws word or design marks;
(e) engaging in any other activity constituting unfair competition with MPS or constituting an infringement of any of MPS’ marks; and
(f) instructing, assisting, aiding or abetting any other person or business entity in engaging in or performing any of the activities referred to in subparagraphs (a)-(f) above.
It is further ordered that Defendant LSM shall recall from its retail customers all products not yet sold bearing the mark Outlaws and/or a design mark featuring a masked cowboy, such products to be retained by LSM until after trial of this matter.”
Finally, the court ordered that the defendant post a bond in the amount of $ 200,000 pursuant to Rule 65(c) of the Federal Rules of Civil Procedure.
Montana Professional Sports, LLC, v. Leisure Sports Management, INC. et al.; M.D. Fla.; Civil Action No.: 6:05-cv-1827-Orl-18DAB 2/7/06
Attorneys of Record: (for plaintiff) J. Timothy Schulte, Zimmerman, Kiser & Sutcliffe, P.A., Orlando, FL; John Robert Chiles, Robert Franklin Springfield, Burr & Forman LLP, Birmingham, AL; Steven J. Nataupsky, Knobbe, Martens, Olson & Bear, LLP, Irvine, CA. (for defendants) Lori T. Milvain, Michael J. Furbush, Gronek & Latham, LLP, Orlando, FL.
