MiniGP: the FIM and Dorna appropriate the brand of an American company – Roadracing World Magazine
By Michael Gougis
In 2008, Ryan Fleming recognized that youth motorcycle road racing in the United States was going through a very bad time and decided to do something about it. He founded NJminiGP and trademarked the name MiniGP. This phrase now stands for a New Jersey-based limited liability company. Under the umbrella of this company, franchisees currently operate six road racing mini-organizations in the eastern United States.
Imagine Fleming’s surprise when the FIM and Dorna Sports, owners of the commercial rights to the MotoGP and Superbike World Championships, announced in early 2021 the creation of the FIM MiniGP World Series, with national series operating around the world. Fleming believes that Dorna’s name for his organization infringes on his company’s trademark.
“We’ve spent over a decade working to build a program that this sport desperately needs,” Fleming said. Road racing world. “We have worked to create an education and sustainability program that provides top talent for the highest level of motorcycle racing. We have successfully franchised this product on the East Coast. Our name is all we are. We cannot lose our name. It’s who we are.
Road racing world asked Dorna in early December to respond to allegations that it violated the MiniGP trademark. To date, Dorna has not responded.
Trademark law is a relatively well-established area of jurisprudence. There are tests that are applied by a trier of fact to determine if a trademark has been infringed. The United States Patent and Trademark Office grants US patents and registers trademarks. According to this office, there are two key factors that determine whether trademark infringement has occurred.
The first is the degree of similarity between the marks at issue. Obviously, the US-based organization and Dorna use the word “mini” and the abbreviation “GP” as one word. The second key factor is the similarity between what is advertised and marketed. Or, as the Patent and Trademark Office puts it, “whether the goods and/or services of the parties are sufficiently related that consumers are likely to (wrongly) assume that they come from a common source” . Obviously, the New Jersey organization and the FIM organization have road racing mini-series.
Minor factors that a court may consider, according to the patent office, include:
How and where the parties’ goods or services are advertised, marketed and sold. MotoAmerica’s Mini Cup Series is part of the FIM MiniGP World Series, and in 2021 races were held on the US East Coast, in the same geographic area where US-based MiniGP organizations operate.
The range of potential buyers of the goods or services. The MotoAmerica Mini Cup/FIM MiniGP World Series geographies and the New Jersey organization clearly overlap, meaning riders who compete in one could, geographically at least, compete in the other. And in the world of the Internet, press releases aren’t posted “anywhere,” but exist as part of the World Wide Web, which means the potential readership audience is literally, well, global.
If there is evidence of actual confusion caused by the allegedly infringing mark.
Defendant’s intention in adopting his mark.
The strength of the applicant’s mark. It’s something Fleming’s organization has worked to protect and develop over the years.
“Countless organizations have attempted to operate under our name, hoping to profit from our success,” says Fleming. “Most of the time, a simple cease and desist request causes them to stop using the MiniGP name. In some cases, it took multiple emails and phone calls.
“We have reached out to social media to help us successfully remove company pages that violate our brand. In some cases, organizations have continued to use our name based on a technicality such as spelling (the words ‘Grand Prix’).
There are areas where there are differences, although it is up to a fact finder to determine whether they are significant.
First, if there is a similarity between the marks at issue, they are clearly not identical. The American company has an established format for the name, with the geographic region first and the “GP” at the end. For example, the South Florida franchise is identified as SFLminiGP. Dorna’s sentence begins with the sanctioning body – FIM – and ends with the geographical identifier. For the United States, the series is officially known as the FIM MiniGP North America Championship. In addition, the logos of the series are nothing alike. However, it’s hard to get around the fact that the phrase “MiniGP” is central to both names.
Second, at a detailed level, the series are very different. Age requirements for runners are different. The FIM series requires a specific motorcycle (an Ohvale GP-0 160) and specific Pirelli tyres. The New Jersey operation caters to a wider variety of machines, tires and rider ages. The products, in other words, have significant differences. A machine, rider and tires that are all legal in the US-based series may not be permitted in FIM events. However, again, it’s hard to ignore that both are motorcycle road racing series for young people.
The range of potential customers. Currently, the FIM MiniGP World Series operates in many countries, and it would be hard to argue that riders in those countries would confuse the FIM operation with the New Jersey-based operation. But in the United States, the entire population of riders who qualify for FIM events would be eligible to race with the New Jersey-based organization. Obviously, the potential customers for each series would be drawn from the same group in the eastern United States.
From a common sense standpoint, it’s hard to believe that a court in the United States would look kindly on what appears to be an international sanctioning body (FIM) and international racing series promoter (Dorna) appropriating simply the mark of an American company.
Road racing world will follow up with any response received from Dorna Sports and report on any legal challenges as they develop.