We’ve written before about soccer-based trademark issues, and here we go again. This time, it’s not about FIFA but one of international soccer’s star players: Cristiano Ronaldo.
Who Owns the Number Seven?
Ronaldo wears number seven on his Real Madrid and Portuguese National Team jerseys and thus has earned the nickname CR7. Ronaldo (or more accurately, the company JBS Textile Group on his behalf) uses that moniker to market and sell his line of underwear in Europe. Looking to capitalize upon a growing international soccer following in the United States, JBS wants to bring its CR7 line, expanded to include other apparel, to market here (although after this year’s FIFA World Cup, maybe they should be getting a marketing deal with Tim Howard instead – but I digress). So, what’s the issue?
Well, it turns out that the CR7 trademark is registered in the United States to one Christopher Renzi of Rhode Island, who obtained a registration from the United States Patent & Trademark Office (USPTO), with no objections, in 2009 (when, incidentally, Ronaldo was wearing number 9 for Real Madrid). Renzi has used his CR7 mark to sell t-shirts, jeans, and a seven-minute workout video.
JBS initially wrote to Renzi demanding that he abandon his use of CR7, but followed up with an offer to pay Renzi for the mark. Renzi refused JBS’s offer, leading JBS to file a cancellation proceeding with the USPTO and Renzi to file suit in Rhode Island District Court for a declaration of his valid U.S. ownership of the CR7 mark.
U.S. and International Marks are Different
Renzi insists he derived the CR7 mark from his initials and his birthday, not from Ronaldo. He has also been using it in commerce in the United States since 2008. JBS claims that Renzi used and registered the mark only to piggyback on Ronaldo’s international fame and that he should not have gotten a registration on the mark in the first place because it is so closely associated with Ronaldo around the world. Looks like this dispute is going to be around for a while. So, what’s interesting about this case?
Well, aside from the fact that it involves an international soccer star whose marketing deals are worth millions, it illustrates a common intellectual property issue encountered in today’s global marketplace.
Business may be increasingly global, but trademark rights remain jurisdiction-bound. The fact that you have your trademark registered in one country does not necessarily give you trademark rights in any other country. Thus, companies that do not consider the global strategy for any particular trademark early on often run into the same problem JBS has: A mark they have valid, exclusive rights to use in their home county has already been used (or registered) by someone else in a country where they would like to expand. This often results in companies having to use different marks in different countries.
"First to Use" Wins Every Time
So while our world of commerce may have disappearing borders, borders in the world of IP are firmly intact. On top of that, every country has different procedures and nuances to its trademark law. This is why we recommend conducting clearance searches in any market you might want to enter early in your trademark and branding process.
Here it appears that, unless it can strike a deal with Renzi or somehow get traction in the cancellation proceeding, JBS may be out of luck in the United States. U.S. trademark law follows a “first to use” doctrine under which use of a mark in commerce automatically confers common law trademark rights in this country. Under that doctrine the USPTO and courts only look at use of a mark within the United States, not elsewhere. Accordingly, Renzi’s use of the mark in commerce in the United States since 2008 likely trumps JBS’s claims about its use elsewhere in the world in the eyes of the USPTO and the Rhode Island District Court.
The take away: In the early stages of your branding process, consider the possibility of expansion to foreign markets. Then, in addition to clearing your proposed mark in the United States, have your trademark attorney expand your clearance search to cover these potential foreign markets and consider registering your mark in those countries. You may also want to ask your attorney to monitor your most important trademarks with a global watch service.