Each Friday we here at The Legal Blitz are going to feature an article from our good friends at Sport-In-Law in our effort to fulfill our promise to provide the best sports law content on the Web. This week’s feature deals with a trademark infringement claim between Soccer United Marketing and Cacique Distributors.
Soccer United Marketing brought an action on Jan. 30 against Cacique Distributors for breach of contract. According to Soccer United Marketing’s (SUM) website, “it is the preeminent soccer business company in North America.” Major League Soccer, the United States Soccer Federation, and the sponsorship rights for the Mexican National Team’s games played in the United States are among the many entities SUM owns the rights to.
Cacique Distributors, the defendant in the case and California dairy distributor, entered into an agreement with SUM on February 2, 2010 for sponsorship rights with the Mexican National Team when it played in the United States. The parties agreed that Cacique Distributors could use the team trademark that is owned and controlled by SUM and field boards during the games. The contract also stated that the defendant could advertise itself as the “Official Sponsor of the Mexican National Team.”
On October 15, 2010, Cacique Distributors was granted the rights to the 2010-2011 CONCACAF Champions League tournament in a amendment to the original agreement. In a further amendment, the parties agreed to delete a drinkable yogurt product from the menu at the game and add various new benefits. Cacique Distributors accepted the beneficial events that included: Mexican National Team sweepstakes, team hosted dinners, and a meet and greet.
Cacique Distributors’ attorney informed SUM of their intent to terminate the contract with SUM. The defendant alleged that SUM failed “to maintain a trademark registration in class 29 for dairy products for the FMF soccer logo,” and that SUM failed to bring a financial gain to Cacique Distributors. SUM said that the alleged breach was an attempt for Cacique Distributors to avoid the obligations of the contract.
SUM claims that it performed its obligations that totaled $475,000. Under the agreement, the defendant agreed to pay half of the total amount that SUM had charged by January 15,2012. The suit claims that Cacique Distributors accepted Soccer United Marketing’s benefits and intellectual property. The suit gives an example of how the defendant continues to use the Mexican National Team’s trademark on their website, the team photo on their semi-trucks and have advertising on the field boards.
Both parties entered into a valid, legally binding contract where the defendant agreed to pay $237,500 by January 15, 2012. Cacique Distributors failed to do so, which resulted in a breach of obligations under the agreement. SUM seeks a judgment in its favor for:
1) Cacique Distributors to pay $475,000 it owes Soccer United Marketing as the terms state in the contract;
2) Cacique Distributors to pay any other damages resulting from their conduct; and
3) Cacique Distributors to pay SUM its costs and attorneys’ fees