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NWSL denies Kansas City Royals' suit over Utah Royals FC trademark

Utah Royals and Houston Dash are introduced in Sandy on Saturday, May 19, 2018. Utah won1-0.
Utah Royals and Houston Dash are introduced in Sandy on Saturday, May 19, 2018. Utah won1-0.

On Monday, the National Women’s Soccer League denied there is a trademark infringement against the Kansas City Royals, in response to a suit filed in late August.

Major League Baseball's Royals filed an opposition on Aug. 29 with the U.S. Trademark and Patent Office, claiming trademark infringement by the NWSL with the Utah Royals FC trademark.

According to another document associated with the case outlining notices and trial dates, the NWSL had a deadline of 40 days to answer.

The NWSL’s answer, filed Monday, says in part “that Major League Baseball has not and will not be damaged by registration of Applicant’s (NWSL) challenged marks, that the Opposition (Kansas City Royals) constitutes a broad overreach by Major League Baseball to interfere with and stifle Women’s Soccer and professional female sports in general.”

Utah Royals FC played its first professional season in the NWSL in 2018, after Real Salt Lake announced Nov. 16, 2017, it had acquired a franchise in the NWSL. Four days later, the league announced the FC Kansas City franchise would be shuttered and its players and draft picks would be transferred to the new club in Salt Lake City.

In the document containing its response, the NWSL outlined eight affirmative defenses to the claims.

Among them, the third defense claims that Major League Baseball has long known about the NWSL and the Utah Royals FC but waited well after the NWSL had used significant resources to establish the Utah Royals brand before acting.

In the fourth defense, the document states, “Major League Baseball has long been aware of Women’s Soccer in general and the Utah Royals FC in particular but failed to timely take any proactive steps concerning the Utah Royals FC name or marks from the outset.”

The NWSL also challenged there is no evidence of confusion between the brands of the Kansas City Royals and the Utah Royals FC, and that the suit was filed "for the ulterior purpose of demoralizing Women’s Soccer and stifling professional female sports leagues in general."

In the original trademark suit, the Kansas City Royals claimed that the Royals FC logo, which incorporates a lion and crown design, are symbols closely tied to the Kansas City Royals franchise. This, according to the suit, "constituted an attempt to tie the name and logo to the former Kansas City location of the predecessor team it replaced by trading on the goodwill and recognition of Opposer’s ROYALS club and Opposer’s Marks."

In its defense, the NWSL also explained how the Utah Royals FC name ties back to Real Salt Lake and the Real Monarchs, the reserve team of RSL that plays in the United Soccer League.

"The name and marks associated with the Utah Royals FC were explicitly chosen to align Utah Royals FC with Real Salt Lake and the Real Monarchs and to link or associate all three teams in the minds of the consuming public," the document states.