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Kristin Murphy, Deseret News

Kansas City Royals, NWSL locked in trademark dispute over Utah franchise's name

By Sean Walker, | Posted - Oct 9th, 2018 @ 3:33pm

SANDY — The first big test of Utah Royals FC’s offseason will be away from the soccer field.

Kansas City Royals Baseball Corporation filed a lawsuit against the National Women’s Soccer League on Aug. 29, alleging violations of trademark rules for the new Utah expansion club’s use of the nickname "Royals."

The filing alleges that the Utah club infringes on the brand and name of the Kansas City baseball club, which was established in 1969 as an expansion franchise and has won two World Series titles, most recently in 2015.

The Royals baseball club "believes that it will be damaged by registration of (Utah Royals FC’s) mark and design mark and requests that the ... registrations be denied," the club's legal counsel wrote in the opposition filing.

The National Women’s Soccer League responded by the Monday deadline. In its response, the league countered that there is no “likelihood of confusion” associated between the Kansas City Royals brand and the Utah Royals brand. It added that the baseball club’s filing “constitutes a broad overreach by Major League Baseball to interfere with and stifle women’s soccer and professional female sports leagues in general,” according to court documents.

Among its eight defenses for using the name "Royals," the league stated that "Major League Baseball waited until women’s soccer and its members had invested significant resources into advertising, marketing, promoting and establishing the Utah Royals FC name and marks" before acting, according to court documents.

The club that became known as Utah Royals FC launched Nov. 16, 2017, after less than three weeks of discussion and contract negotiations between RSL owner Dell Loy Hansen and the National Women’s Soccer League.

At the time of its announcement, the league was in negotiations with FC Kansas City about the continued existence and use of the club. Shortly after Utah joined the league, however, the National Women’s Soccer League announced that it had "re-acquired FC Kansas City LLC’s membership interest in the league," and folded the franchise.

"Kansas City is an ongoing conversation that is separate from this," National Women’s Soccer League managing director Amanda Duffy told at the time of the original announcement.

Player contracts were transferred to the new team in Utah, but business operations ceased and the yet-to-be-named Royals founded their own business in Salt Lake City around a third professional club in the Real Salt Lake organization.

By folding the team, FC Kansas City's interests did not transfer to Salt Lake City, including two league titles won in 2014 and 2015. The new club, however, did receive FC Kansas City’s picks in the 2018 National Women’s Soccer League College Draft, as well as the No. 1 overall pick in the 2019 draft (which did not belong to FC Kansas City).

The suit alleges that the day after the announcement of the new Salt Lake club, a lawyer representing the RSL organization contacted an outside lawyer in Kansas City and indicated a proposed name of "Utah Royals." The counselor responded one week later, telling the soccer club that the baseball Royals club "is not in favor of this, and overall, I would not encourage you to be very optimistic," according to court documents.

On Dec. 1, 2017, the Utah Royals FC’s team name, logo and insignia were officially announced.

Utah Royals FC declined to comment on the allegations due to the nature of the legal matters. The club deferred all future inquires to the NWSL league office.

The deadline for discovery conference — the next step in the trademark dispute — is Nov. 7. If necessary, pre-trials could begin as early as June 2019, with oral hearings currently scheduled for March 11, 2020, according to court documents.

The suit does not mention Real Salt Lake, the National Women’s Soccer League club's parent company founded as an expansion team in Major League Soccer in 2004, nor the Real Monarchs, a lower-division team that launched in 2014.

Sean Walker

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