Originally published on March 14, 2014 at SoccerNewsday.com.
Has Major League Soccer been doing business as Chivas Guadalajara Licensing?
Who exactly is, or was, behind Chivas Guadalajara Licensing LLC, the corporation that registered the marks Los Angeles SC and Los Angeles FC with the U.S. Patent and Trademark Office?
At first glance it may seem that a corporation with that name belongs to the former ownership group, but not necessarily.
It turns out Chivas Guadalajara Licensing, LLC, was an entity first formed in the state of Delaware on Aug. 2, 2005. This same entity was later registered in California 3 months later.
It turns out that Major League Soccer was also incorporated in the State of Delaware on July 24, 1999. Four months later, MLS LLC was registered in the state of New York on Nov. 13, 1999.
Also significant in this matter is the registering of Soccer United Marketing LLC, first in the State of Delaware on Feb. 22, 2002 then in the State of New York on January 14, 2003. This is the marketing arm of MLS that promoted matches in the U.S. like Chivas Guadalajara vs. Barcelona years back, and those involving the Mexican Men’s National Team.
What we get is this pattern of entities first being incorporated and registered in Delaware, followed by registration in other states, all roads and signs point there.
The United States Patent and Trademark Office’s listing for Chivas GDL LLC has Alan Blum as its attorney of record. A search for him reveals that he’s based in Manhattan.
What gets more intriguing is learning that Blum is the listed trademark attorney for MLS also, in MLS’ USPTO listings. Is it mere coincidence that the entities Chivas GDL LLC and MLS share the same attorney? Given that this attorney is so closely linked to both entities, is there a possibility that the league was acting as Chivas Guadalajara LLC through a fictitious name/DBA?
A number of questions arise. Was the registering of Los Angeles SC and Los Angeles FC done cooperatively with MLS and Vergara? Yes, in part. Chivas GDL LLC looks like a joint venture between the league and the former ownership, but done through a fictitious name, because of the technicalities in licensing the Chivas brand.
Oh, and guess who is SUM’s trademark attorney? That’s right, Blum.
The MLS/Chivas Guadalajara Licensing LLC relationship wasn’t solely for marketing Chivas USA. That entity had U.S. promotional and commercial rights to the brands Club Deportivo Guadalajara S.A. de C.V. (Sociedad Anónima de Capital Variable), Club Guadalajara and Rebaño Sagrado. Then the entity trademarked Los Angeles SC and Los Angeles FC. This gets us to the next obvious question.
What happens to Chivas Guadalajara Licensing LLC now that Vergara was bought out? Garber said that the LASC and LAFC marks were dead, but the USPTO listed them as live before, during and after his stating the opposite. The marks were never dead – the catch is that they were “dead” to the entity Chivas Guadalajara Licensing LLC after the Vergara buyout, but live to MLS LLC. All that was needed was a transfer of those marks to MLS.
What’s also insightful is that the corporation in question is listed as a domestic one and first in the state of Delaware. So the Chivas GDL Licensing owner is not (was not) foreign-based, where Vergara’s main operation is, foreign. For example, the Chivas Regal brand has an owner (Chivas Holdings) listed in the USPTO and based in the UK.
It looks like Major League Soccer was already planning to acquire the marks Los Angeles SC and Los Angeles FC, but first through the fictitious name Chivas Guadalajara Licensing LLC.