Question about using the name "World Cup" in a product or service sold

[NYCBEAST15]

What is the name of your state (only U.S. law)? Ohio


Hi everyone,
Will be starting an entertainment concept called the "World Cup Car" (ie: FIFA Soccer 2018 World Cup). I intend to sell products and make money via brand deals advertising, is this legal since it has "World Cup in the title"?
THanks very much
Kevin

 

[quincy]

What is the name of your state (only U.S. law)? Ohio


Hi everyone,
Will be starting an entertainment concept called the "World Cup Car" (ie: FIFA Soccer 2018 World Cup). I intend to sell products and make money via brand deals advertising, is this legal since it has "World Cup in the title"?
THanks very much
Kevin

Without authorization, you cannot use the trademark "World Cup" in the manner you propose. Sorry.

 

[Zigner]

What is the name of your state (only U.S. law)? Ohio


Hi everyone,
Will be starting an entertainment concept called the "World Cup Car" (ie: FIFA Soccer 2018 World Cup). I intend to sell products and make money via brand deals advertising, is this legal since it has "World Cup in the title"?
THanks very much
Kevin

You should probably check this site out: http://www.fifa.com/about-fifa/marketing/brand-protection/index.html

I imagine that FIFA has considerable resources that they will use to vigorously protect their intellectual property.

 

[quincy]

NYCBEAST can look at the FIFA Guidelines to see what marks are protected and how these protected marks can and cannot be used: http://resources.fifa.com/mm/document/affederation/marketing/02/85/05/06/2018fifaworldcuppublicguidelines_en_aug2017_neutral.pdf

If trademark holders do not diligently enforce their rights in their marks, they risk losing them. FIFA is diligent.

 

[adjusterjack]

What is the name of your state (only U.S. law)
Will be starting an entertainment concept called the "World Cup Car" (ie: FIFA Soccer 2018 World Cup). I intend to sell products and make money via brand deals advertising, is this legal since it has "World Cup in the title"?

Expect to be sued for all the money you make and then some.

 

[quincy]

Expect to be sued for all the money you make and then some.

More likely an injunction. NYCBEAST probably would have his goods pulled before there was any profit made.

There are ways to use trademarks that do not infringe on the trademark holders' rights. NYCBEAST can discuss particulars with an IP attorney in his area if he wishes ... but it is probably best for him to find another way to make money rather than trying to capitalize off the name and reputation of the World Cup.

 

[justalayman]

More likely an injunction. NYCBEAST probably would have his goods pulled before there was any profit made.

There are ways to use trademarks that do not infringe on the trademark holders' rights. NYCBEAST can discuss particulars with an IP attorney in his area if he wishes ... but it is probably best for him to find another way to make money rather than trying to capitalize off the name and reputation of the World Cup.

Maybe it’s just how I’m reading it but it’s not clear, to me, he intends to infer any association with fifa World Cup. I can’t tell by his question whether he used the fifa statement as suggesting an association or simply as an example of another use that he believes may result in him from using the term World Cup car.


World Cup, itself, doesn’t appear to have trademark protection and World Cup is used in association with many other terms and phrases which do have trademark protections. If he doesn’t intend to infer association with fifa, why would he be prohibited from the use?

I can’t seem to find fifa World Cup in the Tess registry.

 

[quincy]

Maybe it’s just how I’m reading it but it’s not clear, to me, he intends to infer any association with fifa World Cup. I can’t tell by his question whether he used the fifa statement as suggesting an association or simply as an example of another use that he believes may result in him from using the term World Cup car.


World Cup, itself, doesn’t appear to have trademark protection and World Cup is used in association with many other terms and phrases which do have trademark protections. If he doesn’t intend to infer association with fifa, why would he be prohibited from the use?

I can’t seem to find fifa World Cup in the Tess registry.

World Cup is a USPTO registered mark. It's there.

The link I provided lists the protected marks, what goods and services they cover, and it also tells how these marks can be used without first obtaining a license.

For the World Cup, one needs not only look at FIFA but also at the licensed corporate sponsors and their uses of the marks.

The word "world" and "cup" can be used by anyone, as a note. These words are generic. It is how these words are used together and how any goods/services are marketed when using these words that can determine if using the words together will infringe on FIFA's international trademark rights.

 

[justalayman]

http://tmsearch.uspto.gov/bin/showfield?f=toc&state=4807%3A5xl0ju.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=World+cup&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query&a_search=Submit+Query


Just because I say I’m a potato, it doesn’t mean I’m a potato.


As you can see, there are a varsity of trademarks that use the words “World Cup” along with some other word(s). Heck, there is an abandoned mark using just the words; World Cup (and it wasn’t registered by fifa)

http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:5xl0ju.2.143


Here is one: World Cup

http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:5xl0ju.2.225


Number 4103414
Registration Date February 28, 2012
Owner (REGISTRANT) International Softball Federation, Inc. CORPORATION OKLAHOMA 1900 South Park Road Plant City FLORIDA 33563
Attorney of Record Scott J. Major
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


What am I missing that unless World Cup car is used to suggest an affiliation with fifa World Cup, it isn’t unlawful?

 

[PayrollHRGuy]

The OP and other might be interested in this page and the pages linked to it. http://www.fifa.com/about-fifa/marketing/brand-protection/intellectual-property.html

They don't seem to even claim just the phrase "World Cup". Now if you use "FIFA" "WORLD CUP 2018", "RUSSIA 2018" it looks like they are going to come after you.

But they also say this.

Fair play
As the organiser of the event, FIFA holds all commercial rights to the FIFA World Cup™, its greatest commercial asset. However, FIFA recognises that football is a worldwide passion and of course FIFA is not opposed to businesses benefiting from the thriving economy surrounding the FIFA World Cup™ by using generic references to football. FIFA even encourages shop owners to join in with the celebration by decorating their shop windows and facades with generic football terms and objects. FIFA actively encourages anyone that wants to take advantage of legitimate business opportunities created by the FIFA World Cup™. FIFA asks that any commercial activities aimed at capitalising on the large numbers of spectators are fair with regard to FIFA and its Commercial Affiliates.

 

[justalayman]

The OP and other might be interested in this page and the pages linked to it. http://www.fifa.com/about-fifa/marketing/brand-protection/intellectual-property.html

They don't seem to even claim just the phrase "World Cup". Now if you use "FIFA" "WORLD CUP 2018", "RUSSIA 2018" it looks like they are going to come after you.

But they also say this.

Fair play
As the organiser of the event, FIFA holds all commercial rights to the FIFA World Cup™, its greatest commercial asset. However, FIFA recognises that football is a worldwide passion and of course FIFA is not opposed to businesses benefiting from the thriving economy surrounding the FIFA World Cup™ by using generic references to football. FIFA even encourages shop owners to join in with the celebration by decorating their shop windows and facades with generic football terms and objects. FIFA actively encourages anyone that wants to take advantage of legitimate business opportunities created by the FIFA World Cup™. FIFA asks that any commercial activities aimed at capitalising on the large numbers of spectators are fair with regard to FIFA and its Commercial Affiliates.

On the link Quincy provided they do lay claim to the term; World Cup

(Page 11 of their publication)

 

[quincy]

On the link Quincy provided they do lay claim to the term; World Cup

(Page 11 of their publication)

Again, it is HOW the words World and Cup are used and for what purpose these words are used that will determine if the use of World Cup on your own product or service infringes on the rights of FIFA.

You can use the word World and you can use the word Cup. The use of these words together can be okay or the use of these words together can create legal headaches for the user. You cannot confuse consumers into believing you have any connection at all with FIFA if that connection does not exist.

Trademark law centers on consumer confusion. You confuse a consumer with your use of a trademark that is the same or similar to one already in use by another, you open yourself up to a lawsuit.

 

[justalayman]

Again, it is HOW the words World and Cup are used and for what purpose these words are used that will determine if the use of World Cup on your own product or service infringes on the rights of FIFA.

You can use the word World and you can use the word Cup - the use of these words together just cannot confuse consumers into believing you have any connection at all with FIFA if that connection does not exist.

Trademark law centers on consumer confusion. You confuse a consumer with your use of a trademark that is the same or similar to one already in use by ano, you open yourself up to a lawsuit.

Well, that’s why i said what i did in my first post:

Maybe it’s just how I’m reading it but it’s not clear, to me, he intends to infer any association with fifa World Cup. I can’t tell by his question whether he used the fifa statement as suggesting an association or simply as an example of another use that he believes may result in him from using the term World Cup car.

 

[quincy]

Well, that’s why i said what i did in my first post:

It is a risk to use another's registered trademark. The risk is there for NYCBEAST if he chooses to use World Cup. He could find he loses his entire business investment to an FIFA trademark challenge.

When there are SO MANY words in the English language alone to choose from, it makes no sense to me to start your business off with trademark attorneys circling. The ONLY reason I can see to use a famous mark that is already registered is to trade off the reputation of the original trademark.

I would advise NYCBEAST to choose a name that is unique to him and market his goods/services with the hope his mark will one day achieve the same recognition and respect by consumers that the other famous marks have.

But he is free to discuss his plans with an IP attorney in his area.

 

[NYCBEAST15]

Just wanted to drop a quick thank you to everyone for the assistance.
Fun to read how everything works.

Had someone suggest a different name that may work better for the Web Series that is created.

Thank you again