The PGA and LIV Golf League (LIV) surprisingly agreed to unify and become one golf entity last week. Their bitter comments towards one another and the year-long legal battle are finally over. Could part of the merger be because of LIV’s trademark filing issues?
In March, LIV nightclub in Miami, known as one of the most popular clubs in America filed a court action to oppose LIV’s attempt to register its trademark.
According to the Notice of Opposition, the nightclub believed that both trademarks are “visually and phonetically similar and the goods and services share similarities.” For both companies, LIV represents the Roman numeral for the number 54. LIV nightclub was built in 1954 and each LIV golf event is 54 holes.
The nightclub does not want to have its own trademarks diluted. Trademark dilution refers to the unauthorized use of and/or application for a trademark that is likely to weaken the distinctive quality of or harm a famous mark. Trademark dilution protects marks that are so well-known, highly reputable, or “famous” that jurisdictions have decided they deserve protection whether or not their unauthorized use is likely to cause consumer confusion. This is different from trademark infringement. Trademark dilution does not necessarily involve the unauthorized use of a mark in connection with marks that are confusingly similar to those offered in connection with the famous mark. LIV nightclub and LIV golf are unrelated to one another, but LIV nightclub is so famous since athletes, models, and other prominent figures attend regularly that consumers could believe they are associated with one another.
Without a trademark for the name of the league, LIV Golf most likely would have had to change its name in order to make money off of its name and likeness.
Also, an Argentine corporation, Cool Brands Supply, has filed a federal trademark infringement lawsuit against the LIV Golf League and its HyFlyers GC team captain, Phil Mickelson. Both logos are reflected pairs of F’s. The company has a real case due to the similarity of the logos in the same class consisting of shirts, hats, and sweatshirts. The complaint states, “the similarities between the two marks, particularly when used on clothing, are striking, and are confusing consumers and causing damage to Plaintiff's senior mark and brand.” Cool Brands Supply also stated that due to LIV’s ties to Saudi Arabia, it could hurt its brand’s reputation if consumers believe that it partnered with LIV.
After these incidents, LIV would have to do some rebranding in order to have trademarks that they could actually profit off of. Without filed trademarks, LIV would be prone to trademark litigation. The PGA Tour has a vast number of filed trademarks that they could use in numerous classes. It would be no surprise if trademarks were a small reason LIV decided to merge with the PGA Tour.
Chris D'Avanzo is a 2L at Hofstra Law School and can be found on Twitter @_chrisdavanzo.