by Paul Kennedy @pkedit
On Monday, U.S. Soccer and U.S. Soccer Foundation filed a joint motion in the U.S. District Court for the District of Columbia, asking the court for a 30-day stay in proceedings as they have reached a "resolution in principle."
The stay, the parties told the court, will allow them to continue talks and "prepare a final settlement."
They argued that the stay is in the interest of the court as it will clear time and resources needed to address three motions before the court that may now no longer be needed to be resolved.
Origins in 1994: The U.S. Soccer Foundation was founded in the aftermath of the 1994 World Cup when the U.S. organizing committee generated a profit of $50 million.
Over the years, the U.S. Soccer Foundation became active in the soccer community, raising additional money and awarding grants to program primarily using the sport to promote the welfare of children in underserved communities.
Legal dispute: In December 2018, the foundation sued the federation in the U.S. District Court for the District of Columbia after the two organizations couldn't settle their disagreement over the use of the foundation's name and logo.
U.S. Soccer's position was that it owned the name â€śU.S. Soccer Foundationâ€ť and foundation trademarks and it was going to use â€śU.S. Soccer Foundationâ€ť in its own development efforts. It argued that for the foundation to use "U.S. Soccer Foundationâ€ť caused -- and was going to continue to cause -- confusion to consumers and -- bottom line -- it demanded that the foundation cease using the â€śU.S. Soccer Foundation."
U.S. Soccer is indeed listed in the U.S. Patent and Trademark Office as the rightful owner of trademarks for â€śU.S. Soccer Foundation.â€ť The foundation's response: it used the name and trademarks for 22 years without the federation's objection so to complain now was wrong.
The foundation has sought a declaratory judgment -- asking the court to rule there is no infringement. Many of the foundation's defenses address principles in equity law: laches, abandonment, waiver, estoppel and unclean hands. The federation filed counterclaims -- eight in all -- on Feb. 18, 2019, arguing the foundation wrongly used the name and trademarks without the federation's consent.
Family affair: While the federation and foundation have separate missions, they've remained connected for years.
The chairman of the 1994 World Cup organizing committee was Alan Rothenberg, who was U.S. Soccer president at the time of the foundation's founding. Carlos Cordeiro, U.S. Soccer president at time of the suit, Sunil Gulati, Cordeiro's predecessor, and Rothenberg were all listed on the foundation's board of directors at the time of the suit.
The case was in its 17th month and still in discovery when Monday's joint motion was filed. It came less than a week after the latest filing in a protracted dispute over discovery, a dispute that centered on the fact that federation officials had served on the foundation since the beginning and around the question of who owned the documents -- 3,754 in all -- these officials held.