District Court Refuses to Enjoin Scheduled Soccer Game Because Plaintiffs Did Not Clearly Show Priority in Team Name Trademarks
Jennifer Gaeta | Bloomberg Law
In a dispute over competing soccer games organized to commemorate Liberia’s independence day, each featuring teams with the same name, the U.S. District Court for the Eastern District of Pennsylvania denied preliminary injunctive relief, finding that it was unclear whether plaintiffs actually had priority in the team name trademarks.
Background of the Parties and Their Marks
Plaintiff Eli Barrolle has a federally registered trademark for BARROLLE SPORTS ASSOCIATION registered on August 23, 2005. Plaintiff Union of Invincible Eleven & Majestic Sports Association owns a federally registered trademark for INVINCIBLE ELEVEN, which was registered on May 23, 2006. “Barrolle Sports Association sponsors a sporting event each year to commemorate Liberia’s independence day. This year it has scheduled a soccer game between Mighty Barrolle and Invincible Eleven for July 23, 2011, at Bensalem High School.” Barrolle at 1.
The defendants, Liberian Sports Association of Pennsylvania, Mighty Barrolle Sports Association of Trenton, Trenton Professional Old Timer Association, Herbert Cooper, D. Zogar Wilson, Sabdra Barrolle, Kula Blidi, and John Moore were also set to host a soccer game in honor of Liberia’s independence day between teams named Mighty Barrolle and Invincible Eleven. The match was set for the same date at another high school 10 miles away. The plaintiffs filed the complaint and instant motion to enjoin defendants’ game.
Court Denies Injunctive Relief
The court recognized that preliminary relief is an extraordinary remedy granted in limited circumstances. To obtain preliminary injunctive relief, a plaintiff must show: “(1) likelihood of success on the merits; (2) that it will suffer irreparable harm if the injunction is denied; (3) that granting the preliminary relief will not result in even greater harm to the nonmoving party; and (4) that the public interest favors such relief.” Barrolle at 5 (citing Allegheny Energy, Inc. v. DQE, Inc., 171 F.3d 153, 158 (3d Cir. 1999)).
The plaintiffs contended that their federal INVINCIBLE ELEVEN trademark should be protected under the Lahnam Act, and that they had common law rights in the MIGHTY BARROLLE mark. The defendants argued that they registered Pennsylvania trademarks for the INVINCIBLE ELEVEN and MIGHTY BARROLLE marks, applied for in 2002. One of the defendants also had filed a lawsuit in state court against the plaintiffs for trademark infringement of their marks.
The court explained that to grant plaintiffs the requested relief, they must be able to show that they were the first to assert rights in the marks. The plaintiffs, using testimony at the preliminary injunction hearing, were unable to convince the court that they were likely to prevail at trial. Thus, “[w]here plaintiffs seek to enjoin a game that is scheduled to be played just two days after their requested hearing date, and present only a general account as to their ownership and use of particular trademarks, we are not inclined to grant the ‘extraordinary remedy’ of a preliminary injunction.” Id. at 8.
This document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. Bloomberg Finance L.P. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy.
©2011 Bloomberg Finance L.P. All rights reserved. Bloomberg Law Reports ® is a registered trademark and service mark of Bloomberg Finance L.P.