U.S. All Star Federation, Inc. v. Open Cheer & Dance Championship Series, LLC

Holding: The Eleventh Circuit reversed the district court's grant of summary judgment and remanded the case for trial on the issue of whether the marks are descriptive and have acquired secondary meaning.
Standard: summary judgment standard; trademark distinctiveness analysis
Vote: Opinion of the Court by Circuit Judge Marcus.
Practical effect: The case is remanded to the district court for further proceedings, allowing the trademark infringement claims to proceed to trial where a jury will determine the distinctiveness of the marks.

The Eleventh Circuit reversed a district court ruling that dismissed trademark infringement claims by a major cheerleading organization. The appellate court held that genuine disputes of material fact exist regarding whether the marks are descriptive and have acquired secondary meaning.

Background

U.S. All Star Federation, Inc. sued Open Cheer & Dance Championship Series, LLC and its owners for trademark infringement, claiming the defendants infringed on the marks The Cheerleading Worlds and Worlds. The district court granted summary judgment for the defendants, ruling the marks were generic. The Eleventh Circuit reviewed the case de novo.

The court’s reasoning

The court first held that the dismissal of an affirmative defense with prejudice did not estop the defendants from challenging distinctiveness, as distinctiveness is an element of the plaintiff’s prima facie case. On the merits, the court found the marks were not suggestive under the imagination and third-party need tests. However, the court determined that the district court erred in dismissing the marks as generic as a matter of law. The record contained substantial evidence, including media usage and consumer testimony, that the marks were used to refer specifically to the plaintiff’s event rather than the general concept of international cheerleading competitions. This evidence created a genuine dispute of material fact regarding whether the marks are descriptive and have acquired secondary meaning.

What it means going forward

The case is remanded to the district court for further proceedings, allowing the trademark infringement claims to proceed to trial where a jury will determine the distinctiveness of the marks.