Los Angeles – Action Ink Inc., owner of the THE ULTIMATE FAN U.S. Trademark Registration for sporting event promotion services which registered in 1985, is playing defense against the New York Jets football team and a game development company called Arkadium Inc.
The New York Jets recently filed for summary judgment in a lawsuit that Action Ink filed in January of 2012 in a Louisiana District Court. The lawsuit came about after the New York Jets filed a trademark application to register ULTIMATE FAN for a downloadable computer game and related entertainment services. Despite Action Ink’s pre-existing THE ULTIMATE FAN trademark registration, the Jet’s ULTIMATE FAN trademark registered in May of 2011.
The New York Jets use ULTIMATE FAN in relation to a video game created by Arkadium which allows users to enjoy virtual football game experiences and challenges while an actual NFL game is in progress.
The Action Ink complaint accuses the New York Jets of trademark infringement and complains that the sports market targeted by both companies is being swamped with advertising using “Ultimate Fan.” The result is consumers are confused as to the source of Action Ink’s trademark, believing the New York Jets originated the slogan, instead of it, claims Action Ink. This “reverse confusion” is saturating the sports market and is allegedly damaging Action Ink’s business.
Recently the New York Jets filed a Motion for Summary Judgment arguing that Action Ink has abandoned its trademark because it has not been in continuous use for 3 consecutive years. Three years of non-use of a trademark is presumptive abandonment. The Jets believe that Action Ink defrauded the U.S. Patent & Trademark Office upon renewal of the trademark.
Action Ink opposed the Motion for Summary Judgment pointing to several cease and desist letters it sent to third parties using “The Ultimate Fan” over the years, and also revealed attempts to cut a deal with Louisiana State University to expand its business. Action Ink is alleging that, “the existence of residual goodwill is sufficient grounds to reject an abandonment claim.” Action Ink claims that just because it had sporadic periods of erratic sales does not mean the goodwill from the trademark has disappeared. Thus far, the judge has not ruled on the Summary Judgment Motion.
Action Ink is also involved in a similar lawsuit it filed against Anheuser-Busch Inc. who started using “Ultimate Fan” in some of its beer commercials.