This past summer a trademark fight over “Fight Sports” took place between a Canadian company specializing in combat sports content and the New York company owning the trademark. The U.S. District Court for the Eastern District of New York denied the trademark owners preliminary injunction deeming the terms generic and not likely to be confused.
CSI Entertainment, Inc. (”CSI”) is a multimedia company that acquires, produces, and distributes fight-related content through various media outlets in the United States and abroad. CSI owns the trademark for Fight Sports and Fight Sports Network. As a syndicated network, CSI advertises to the consuming public and RSN executives. The trademarks were registered with the USPTO in January 2006 and June 2006 respectively.
The defendants are Canadian companies which offers “24/7” fight-related content through THE FIGHT NETWORK. CSI notified the Canadian companies of its trademark in a cease and desist letter in March 2007. Fight Media, one of the defendants in this action, responded claiming that the marks were generic and denying infringement. The response indicated that if it did not hear back from CSI, it would consider the matter settled. This occurred while Fight Media remained operating in Canada.
When the Canadian company moved into the U.S. market and attempted to register for the Fight Network trademark it was denied due in part to CSI’s registered mark. The New York-based company then filed for a preliminary injunction precluding Fight Media from using the Fight Network and Fight Sports marks.
A Show Cause Order for Preliminary Injunction was filed by CSI in June 2015. The hearing was to request an order to stop Fight Media from using the marks FIGHT SPORTS or THE FIGHT NETWORK. A Preliminary Injunction hearing took place in November 2015 with the Magistrate issuing a Report and Recommendation that CSI’s preliminary injunction be denied. The hearing featured witnesses on behalf of CSI which testified to CSI’s marks, business model and industry reputation. Defendants called witnesses to testify about the nature of CSI’s marks, the defendants’ presence in the market and the defendants’ reputation in the industry.
The three factors a Court considers when determining to order a preliminary injunction is whether the party requesting an injunction:
1. That they face a substantial threat of irreparable damage or injury if the injunction is not granted;
2. The balance of harms weighs in favor of the party seeking the preliminary injunction;
3. That the grant of an injunction would serve the public interest.
In some jurisdictions, the likelihood of success on the merits is another factor considered.
Objections were filed in March 2017 with responses from the defendant occurring in April 2017. After review, the Judge accepted the Report and Recommendation and dismissed the Plaintiff’s request for a preliminary injunction in its entirety. In its order, the court noted that CSI failed to object to the fact that it would suffer irreparable harm in the absence of injunctive relief nor object to the Judge’s decision that the public interest is not harmed by denying the plaintiffs’ request for injunctive relief were factors in its decision. Thus, the Judge determined CSI waived further review of the two of the three prongs of the preliminary injunction analysis. As a result, it failed to carry the burden as the moving party for the preliminary injunction.
The analysis by the Magistrate determined that the balance of the factors weighed in favor of the Defendants. It stated that the terms FIGHT SPORTS and FIGHT SPORTS NETWORK were common within the industry and that there would be no likelihood of confusion between the marks.
While the consensus from many is that the terms Fight Sports and Fight Sports Network, they still hold the U.S. trademarks. Losing out on the preliminary injunction did not cancel their marks, but it meant that the Canadian company can continue to use the Fight Network mark in the United States.
The Report and Recommendation which was adopted by the Court notes that the delay in responding to the Fight Network was a factor in its decision against CSI. Notably, the Report and Recommendation found it unjustified that CSI waited because it realized that it was receiving competition. This is a factor in defeating a preliminary injunction on the basis of irreparable harm. The Magistrate’s report noted that CSI filed the lawsuit two weeks after the USPTO deemed the Defendants’ mark abandoned but had “ample notice” about Defendants’ mark and growing presence in the U.S. market many years earlier. Evidence of this was a cease-and-desist letter sent to the Fight Network in early 2007.
The Magistrate also found CSI’s evidence of harm speculative at best as it did not produce profit and loss statements and only anecdotal testimony that the Fight Network hurt its business.
The Court held that CSI and Defendants’ products “inherently different, rather than confusingly similar.”
There are a few key takeaways with the results of this case.
First, despite the denial of a preliminary injunction, there is still the aspect of infringing on another’s trademark. While the Court was adamant that it concluded that CSI’s FIGHT SPORTS mark was generic in nature, CSI still holds the USPTO trademark. There was no action by Fight Media to cancel the trademark at the time of this writing. Thus, CSI may still assert a claim for trademark infringement and dilution under the Lanham Act. Certainly, Fight Media may assert the same defenses as it did with the preliminary injunction but the thresholds for proof differ.
Second, the issue of delay in filing the preliminary injunction was an issue by CSI. The Report identifies the fact that the lawsuit filed by CSI occurred only after the trademark was denied by the USPTO. The Court determined that due to the delay in filing despite knowing of the mark, it could not find that CSI would be irreparably harmed. While CSI indicated that it was seeking to negotiate some sort of settlement, the lack of diligence in moving forward once it knew of the presence of the United States was an error. The delay in time underscores the need to be vigilant in one’s mark.
Third, CSI did not provide concrete evidence of harm. The failure to provide empirical evidence that it lost business and/or profits due to the presence of a mark that would have likely confused consumers was an error.
Fourth, CSI did not follow up a letter from the Defendants regarding a cease and desist letter that the New York company sent it in 2007. The letter, per the Court record, stated that it did not respond to correspondence from the Defendants. If it had protected its right by responding to Fight Media stating that it was reserving its right to bring up the issue at a later date, this may have provided the necessary protection for a possible future lawsuit.
Finally, the mark FIGHT SPORTS and THE FIGHT NETWORK are considered the weakest of most registered marks due to the fact of its descriptive nature. Trademarks that are fanciful, arbitrary or suggestive are considered the strongest in terms of marks. At the time of the filing with the USPTO, that may not have been the case. But, the Defendants were provided persuasive evidence that the terms were generic in nature.