FFWCT, LLC’S, USA FLAG, LLC’S, AND TRAVIS BURNETT’S RESPONSE

TO USA FOOTBALL, INC.’S MOTION FOR SUMMARY JUDGMENT – Page 1

IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS

SHERMAN DIVISION

USA FOOTBALL, INC., 

Plaintiff,

v.

FFWCT, LLC, USA FLAG, LLC, and 

TRAVIS BURNETT,

Defendants.

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CIVIL ACTION NO.

4:23-cv-00516-ALM

FFWCT, LLC’S, USA FLAG, LLC’S, AND TRAVIS BURNETT’S RESPONSE TO USA 

FOOTBALL, INC.’S MOTION FOR SUMMARY JUDGMENT

Pursuant to Rule 56 of the Federal Rules of Civil Procedure and Rules CV-7 and CV-56 of 

the Local Rules of the Eastern District of Texas, FFWCT, LLC, USA Flag, LLC, and Travis 

Burnett (collectively, “Flag”), the Defendants in Civil Action No. 4:23-cv-00516-ALM, 

respectfully request that the Court deny USA Football, Inc.’s (“FB”) motion summary judgment

(the “Motion”).

I. SUMMARY OF RESPONSE.

Summary judgment shall be granted when the record shows that there is no genuine dispute 

as to any material fact and that the moving party is entitled to judgment as a matter of law. Fed. R. 

Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 323–25, 106 S.Ct. 2548, 91 L.Ed.2d 265 

(1986); Ragas v. Tennessee Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir. 1998).

According to FB, the first issue to be decided by the Court is “Whether Flag’s use of the 

USA FLAG mark creates a likelihood of confusion with the USA Football Marks.” Dk. 62, 

Motion, § II. “Likelihood of confusion is a question of fact ....” Nat’l Bus. Forms & Printing, Inc. 

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v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2012) (citations omitted); Accresa Health LLC v. 

Hint Health Inc., No. 4:18-CV-00536, 2020 WL 4644459, at *64 (E.D. Tex. Mar. 19, 2020), report 

and recommendation adopted, No. 4:18-CV-00536, 2020 WL 2610908 (E.D. Tex. May 22, 2020) 

(“[L]ikelihood of confusion is generally regarded as a question of fact and should not be decided 

... in a motion for summary judgment.”).

There is a material legal issue that precludes granting summary judgment for FB. As a 

matter of law, at least two, if not all four of the Tackle Marks defined below do not include flag 

football within the scope of the services they cover. Alternatively, the term “football” is 

ambiguous, as used in two of the Tackle Marks, and may not include flag football within its scope 

of services. The Court may construe that term, if possible, without extrinsic evidence. If extrinsic 

evidence is needed, a jury must decide that term’s scope. In any event, Flag believes the 

appropriate construction of “football” as used in the Tackle Marks is that flag football is not 

included.

Beyond the legal issues, there are genuine issues of several material facts, particularly 

whether there is a likelihood of confusion between any of the Tackle Marks as FB uses them and 

USA Flag as Flag uses it.

II. STATEMENT OF ISSUES AND QUESTIONS OF FACT.

1. Are there genuine issues of fact as to whether there is a likelihood of confusion 

between Flag’s use of USA FLAG and FB’s ‘472, ‘236, ‘678, and ‘678 Registrations (the “Tackle 

Marks”)?

2. Do the ‘472 and ‘236 Tackle Marks exclude flag football as a matter of law?

3. Is the use of “football” in the ‘678 and ‘678 Tackle Marks ambiguous, and if so, 

does that use exclude flag football?

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4. If the use of “football” in the ‘678 and ‘678 Tackle Marks is ambiguous, can the 

Court construe those registrations, or must the jury hear evidence to determine the scope of 

“football”?

5. Has FB alleged facts or claims in its Complaint that support its assertion in the 

Motion that Flag has infringed the Tackle Marks by posting or reposting photographs of 

individuals wearing apparel that includes one or more of the Tackle Marks on its social media? 1

6. Does the law or the evidence support FB’s assertion that it is “the Governing Body” 

for flag football in the United States?

7. Does the law or the Tackle Marks prohibit Flag’s use of terms like “Governing 

Body,” “national governing organization,” or “Olympic Division” in its marketing, or are such 

terms mere puffery or other permissible use?

8. Has FB proven that there are no genuine issues of material fact as to the 

distinctiveness of the Tackle Marks?

9. Has FB proven that there are no genuine issues of material fact on the extent of the 

similarity of the Tackle Marks to USA FOOTBALL as used by Flag?

10. Has FB proven that there are no genuine issues of material fact of the level of 

sophistication of and degree of care used by consumers of flag football services?

11. Has FB proven that there are no genuine issues of material fact about how FB and 

Flag target the same consumers of flag football services?

12. Has FB proven that there are no genuine issues of material fact about whether Flag 

intended to benefit from any goodwill associated with the Tackle Marks?

13. Has FB presented proper evidence of actual confusion between the Tackle Marks 

1 Flag is filing a Motion to Strike certain evidence cited in the Motion related to this issue.

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and USA FLAG as used by Flag?

14. Absent proper summary evidence, has FB proven that there are no genuine issues 

of material fact about the confusion between the Tackle Marks and Flag’s use of FLAG 

FOOTBALL for flag football services?

15. Has FB conceded that genuine issues of material facts exist on each “digit” of 

confusion by admitting that the evidence favors or weighs in favor of FB.

16. Should a jury be allowed to judge the credibility of FB’s survey expert?

17. Is the report of FB’s survey expert admissible over Flag’s hearsay objection?

III. EVIDENTIARY OBJECTIONS.

EVIDENCE OBJECTIONS

Declaration of Jamie Riley, Docket No. 

62-2

Riley Aff., ¶ 3.(c), (Dk. 62-2)

It is evident on their face that FB did not “make”

the records attached to the Riley Affidavit as Exs. 

A-B, D-G, J-M, or O-Q. They are not, therefore, 

business records under FRE 803(6) and are each 

hearsay. Each also contains hearsay within hearsay. 

FRE 801

1. Riley, Ex., A (Dk. 62-3)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901. Flag moves 

to strike it from the summary judgment record.

2. Riley, Ex. B (Dk. 62-4)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication. FRE 901. Flag moves 

to strike it from the summary judgment record.

3. Riley, Ex. C (Dk. 62-5) Purported evidence of a claim not supported by 

FB’s Complaint.

4. Riley, Ex. D (Dk. 62-6)

Purported evidence of a claim not supported by 

FB’s Complaint. Flag moves to strike it from the 

summary judgment record.

5. Riley, Ex. E (Dk. 62-7) Purported evidence of a claim not supported by 

FB’s Complaint. Flag moves to strike it from the 

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summary judgment record.

6. Riley, Ex. F (Dk. 62-8)

Purported evidence of a claim not supported by 

FB’s Complaint. Flag moves to strike it from the 

summary judgment record.

7. Riley, Ex. G (Dkt 62-9)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901; Selfserving. Flag moves to strike it from the summary 

judgment record.

8. Riley, Ex. H (Dkt 62-10) Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901.

9. Riley, Ex. I (Dkt 62-11)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901. Flag moves 

to strike it from the summary judgment record.

10. Riley, Ex. J (Dk. 62-12)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901. Flag moves 

to strike it from the summary judgment record.

11. Riley, Ex. K (Dk. 62-13)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901; Selfserving. Flag moves to strike it from the summary 

judgment record.

12. Riley, Ex. L (Dk. 62-14)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901. Flag moves 

to strike it from the summary judgment record.

13. Riley, Ex. M (Dk. 62-15)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901. Flag moves 

to strike it from the summary judgment record.

14. Riley, Ex. N (Dk. 62-16)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901; Purported 

evidence of a claim not supported by FB’s 

Complaint.

15. Riley, Ex. O (Dk. 62-17)

Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901. Flag moves 

to strike it from the summary judgment record.

16. Riley, Ex. P (Dk. 62-18)

Purported evidence of a claim not supported by 

FB’s Complaint. Flag moves to strike it from the 

summary judgment record.

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17. Riley, Ex. Q (Dk. 62-19)

Purported evidence of a claim not supported by 

FB’s Complaint. Flag moves to strike it from the 

summary judgment record.

18. Riley, ¶ 6 - FB1640, a text 

message, was received by USA 

Football Director of Football 

Operations Brittney Brothers on 

January 8, 2024.

Hearsay, FRE 801; Lacks foundation to show 

personal knowledge, FRE 602; Lacks proper 

authentication, FRE 90.

19. Riley, ¶ 15 – Flag football is a 

well-known subset of American 

football.

The Riley Declaration does not provide a 

foundation to show that she has personal 

knowledge or how she has personal knowledge to 

make this statement. FRE 602. The statement also 

constitutes an opinion for which she has not been 

designated. FRE 701. 

Other Exhibits

20. Dk. 62-41 (Exhibit 16; 54:7-56:7)

Hearsay and Hearsay within Hearsay, FRE 802, and 

lacks foundation showing personal knowledge. 

FRE 601.

21. Dk. 62-47 (Exhibit 22) Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901.

22. Dk. 62-50 (Exhibit 25) Hearsay and hearsay within hearsay, FRE 802; 

Lacks proper authentication, FRE 901.

23. Dk. 62-51 (Exhibit 26)

Botner’s Report is Hearsay. FRE 802. See § IV.I., 

infra. Flag moves to strike it from the summary 

judgment record.

24. IFAF Website (URLs)

The content on the IFAF website at the URLs in the 

Motion is not authenticated, constitutes hearsay, 

and contains hearsay within hearsay. FRE 802. Flag 

requests that the Court not consider the contents 

available at URLs presented in the Motion.

IV. DISPUTED MATERIAL FACTS.

A. The Tackle Marks do not apply to flag football.

As an initial matter, a significant issue with FB’s Motion is whether the services described 

in the Tackle Marks apply to flag football. Neither the Complaint nor the Motion asserts that FB

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owns any common law trademarks applicable to flag football. See, generally, Dk. 1 (‘516 Lawsuit); 

Dk. 62 (‘465 Lawsuit). FB relies solely on the Tackle Marks to support the Motion. Dk. 1 (‘516 

Lawsuit), p. 4, ¶¶ 13-15; Dk. 62, pp. 4-6, § III.C.; Dk. 62-2, FB Ex. 2 [Riley Decl.] ¶ 8.

The services described in the Tackle Marks relate to “football.” Dk. 62, Dk. 62, pp. 3-6, § 

III.C.; Dk. 62-20, Football Ex. 2R; Dk. 62-21, Football Ex. 2S. There are no other descriptions of

the type of football covered by the registrations. Id.

The ‘472 and ‘236 Tackle Marks applications were filed on December 16, 2003. Flag Exs. 

5 and 6. FB did not, however, use USA FOOTBALL in connection with flag football until 2007, 

more than three years later. FB Ex. 2 [Riley Dec.] ¶ 13 (“USA Football has fielded U.S. National 

teams for international competition in ... flag ... football since 2007.”); Flag Ex. 4 [Hallenbeck 

Dep.] at 100:10-17.

“The rule is clear that registration must be determined in the light of an applicant’s goods 

as described in the application. But the goods must be those on which the mark is actually in use 

and must be accurately and truthfully described”. Toro Co. v. Hardigg Indus., Inc., 549 F.2d 785, 

789 (C.C.P.A. 1977) (citation omitted). As a matter of law, the ‘472 and ‘236 Tackle Marks do not

apply to flag football, as FB was not using USA FOOTBALL in connection with flag football 

when it filed the applications for the marks that became these two registrations. The Court 

accordingly should not consider these two registrations in ruling on the Motion.

The ‘678 and ‘961 Tackle Marks also do not apply to football. Considering the description 

of services in the applications and registrations of all four Tackle Marks together, FB intended for 

“football’s” scope to be the same. As noted above, the ‘472 and ‘236 Tackle Marks do not apply 

to flag football as a matter of law. Yet FB did not broaden the scope of “football” after 2007 when 

it drafted the applications for ‘472 and ‘236 Tackle Marks. Flag Exs. 7 and 8. These two 

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registrations, therefore, also do not apply to football. At best, it is ambiguous whether they apply 

to flag football.

Flag found no cases discussing how a court is to construe an ambiguous term in trademark 

registrations. Patent claims construction rules do not appear to be applicable, as they are specific 

to the construction of patent claims. Contract construction principles also do not neatly apply to 

trademark registrations, as there is only one party to Tackle Marks, and such principles are largely 

and often exclusively based on state law. Flag believes, though, that they are instructive. 

In particular, the doctrine of contra proferentem is “the principle that ambiguities are 

construed against the drafting party ...” and “is based on the idea that the drafting party is likely 

to protect his own interest ....” Songcharoen v. Plastic & Hand Surgery Assocs., P.L.L.C., 561 F. 

App’x 327, 339 (5th Cir. 2014). Though there is only one party to the applications for the ‘472 and 

‘236 Tackle Marks, FB drafted their description of services and failed to define the services

sufficiently to show an intent to apply to football in its services. The Court should, therefore, 

construe “football” to exclude flag football in the ‘472 and ‘236 Tackle Marks.

B. The Plaintiffs.

Flag disputes FB’s statement that it has deep national and international ties to flag football.

This statement is unsupported by reference to any admissible evidence.

Flag disputes that FB’s evidence supports the conclusion that it is “the Governing Body”

of flag football. See Flag’s Ex. 1 [Burnett Dep.] 59:12-60:14; 69:2-15; 70:2-71:5; 71:20-72:1; 

209:18-20; Flag’s Ex. 2 [Davis Dep.] 376:2-378:20. Flag also disputes that the “Recognized Sport 

Organization” (“RSO”) designation previously granted to USA Football by the USOPC amounts 

to a designation or permission allowing USA Football to call themselves “the Governing Body”

or “the National Governing Body” of flag football in the United States. USA Football has never 

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been the National Governing Body for flag football through the USOPC, and being an RSO does 

not allow an entity to call itself “the national governing body.” Flag’s dispute of FB’s purported 

undisputed facts on this issue is detailed in its Complaint in the ‘465 Lawsuit.2

Flag also objects to FB’s misleading use of “American football” throughout the Motion to 

refer to its services. E.g., Dk. 62, p., § III.A., pp. 2-3; § III.D., p. 9. None of the Tackle Marks use 

“American football.” See Dk. 62, pp. 4-6, § III.C. It does this to then claim, using in part the 

International Federation of American Football’s (“IFAF”) website, that flag football is a “wellknown subset of American football.” Dk. 62, p. 9. However, IFAF’s “History” page first mentions 

flag football in 2022,3 and its flag football rules linked on its “Rules” page are dated 2023.4 One 

entity’s 2023-24 hearsay statements do not constitute admissible evidence that the Tackle Marks’

services, whose applications were filed years earlier, apply to flag football. In fact, FB’s need to 

try to use these statements makes it further apparent that its use of “football” in the Tackle 

Registration applications does not apply to football.

FB also attempts to rely on Mr. Burnett and Mr. Davis’s deposition testimony on this issue. 

Dk. 62, p. 9. Assuming, arguendo, that their cited testimony from 2024 supports FB’s position on 

this issue, it is still not evidence of FB’s intent to apply to football within the much earlier Tackle 

Football applications. Messrs. Burnett and Davis are not competent to speak to FB’s intent in 

connection with its trademark applications. Further, while each agreed that “people believe” or 

“would view” flag football as a subset of football, FB Ex. 7 [Davis Dep.] at 18:16-19; FB Ex. 5 

[Burnett Dep.] at 18:22-25, both disputed that such belief was accurate. As they have testified, 

tackle and flag football have different players, rules,5 equipment, “... different everything.” Flag 

2 Flag requests that the Court take judicial notice of the Complaint in the ‘465 matter. FED. R. EVID. 201. 3 https://americanfootball.sport/history/ (last visited June 20, 2024). 4 https://americanfootball.sport/wp-content/uploads/2023/05/FlagRules2023.pdf (last visited June 20, 2024). 5 Notably, IFAF has different rule books for tackle and flag football. See https://americanfootball.sport/ifaf-rules (last 

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Ex. 1 [Burnett Dep.] at 18:22-19:6; 58:14-60:14; 61:3-6. They are different disciplines and are 

“played completely differently.” Flag Ex. 2 [Davis Dep.] at 18:16-19:5. They are so different that 

boys do not play flag football as a high school sport, and not every high school offers it for girls. 

Id.; 19:15-20:12. Unlike tackle football, flag football typically has only 5 to 8 players versus 11 

for tackle football, and flag football generally can be played multiple times a day over multiple 

consecutive days, and the health and safety risks in flag football are generally lower relative to 

tackle football. Flag Ex. 1. FB’s attempts to conflate flag and tackle football to give the impression 

that it has more expansive trademark rights than it does is disputed and should be rejected.

For the purposes of the Motion and this Response, Flag does not materially dispute the 

other facts stated in § III.A., except, as argued supra, the term “football” does not apply to football.

C. The Defendants.

For the purposes of the Motion and this Response, Flag does not materially dispute the 

facts stated in § III.B.

D. FB’s Incontestable Trademarks.

Flag disputes that the Tackle Marks include flag football in the scope of their services. See 

pp. 5-8, § IV, supra.

Flag disputes that FB has continually, since 2002, operated and sanctioned events using 

USA FOOTBALL in connection with flag football. Id. FB claims that Jamie Riley’s deposition 

testimony at FB Ex. 5, [Riley Dep.] 54:18-56:12 supports this assertion. The initial part of this 

testimony (Id. at 54:18-55:20), however, is in the present tense (i.e., in 2024), which is not

evidence of FB use of USA FOOTBALL more than, for the purposes of the Motion, an 

inconsequential amount of time. Ms. Riley then seemingly states that FB has used USA 

visited June 19, 2024).

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FOOTBALL in connection with adult flag football going back to “2005 or ‘6.” Id. at 55:21-56:12. 

She qualifies her answers, however, by saying that it “depend[s] upon the discipline of the sport”

and “relative, again, to the discipline of the sport.” Id. Her later testimony clarifies that her use of 

the term “discipline of the sport” includes all football disciplines, such as tackle and flag football. 

Flag Ex. 4, [Riley Dep.] at 184:13-21; 186:21-187:5. That clarification makes Ms. Riley’s 

testimony at 55:21-56:12 ambiguous as to whether the disciplines to which she was referring 

included flag football going back to “2005 or ‘6.” This testimony is also in conflict with her 

declaration and Mr. Hallenbeck’s testimony, which clearly raises a genuine question of fact on 

when FB first used USA FOOTBALL in connection with flag football. FB Ex. 2 [Riley Dec.] ¶ 

13; and Flag Ex. 4 [Hallenbeck Dep.] at 100:10-17.

Ms. Riley’s testimony at 188:6-10 and Mr. Hallenbeck’s testimony at FB Ex. 1 

[Hallenbeck Dep.] at 20:9-16 are merely statements of when FB was created - 2002.

Flag does not dispute the incontestability of or that FB has developed goodwill in the 

Tackle Marks. It does dispute that they and their goodwill apply to flag football. See § IV.A., 

supra. As set forth in greater detail below, notwithstanding their incontestability, Flag disputes 

that the Tackle Marks are for anything more than weak trademarks.

For the purposes of the Motion and this Response, Flag does not materially dispute the 

other facts stated in § III.C., except, as argued supra, the term “football” does not apply to football.

E. Prior Dealings Between FB and Flag.

Flag disputes FB’s attempts to use Messrs. Burnett and Davis’s lack of knowledge in 2017 

of whether “USA Football’s governance role already included flag football” is evidence that it, in 

fact, included flag football. 62, p. 7, § III.D. Likewise, whether FB told them in 2017 that it had a 

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governance role in flag football is no evidence that it did. Id.

Flag disputes FB’s mischaracterization of Mr. Burnett’s testimony at FB Ex. 5 [Burnett 

Dep.], 178:16-179:5. FB claims that his use of “brand” in the statement that he “thought USA 

Football should know about [usaflagtournaments.com] since they were obviously so into 

protecting their brand ...” meant “the brand, FLAG.” Id. (emphasis added). Such characterization 

is neither expressed nor implied in Mr. Burnett’s testimony and is not a reasonable interpretation 

of that statement.

For the purposes of the Motion and this Response, Flag does not materially dispute the 

other facts stated in § III.D., except, as argued supra, the term “football” does not apply to football.

F. Alleged Infringement and Alleged Marketplace Confusion.

Flag objects to and disputes the relevance of the arguments in § III.E regarding Flag’s 

alleged use of USA FOOTBALL and all testimony and exhibits cited in the eight bullet points in 

that section. Those arguments and evidence are outside of the facts and issues raised in the 

Complaint. The Complaint’s allegations are strictly limited to Flag’s use in commerce of “FLAG.”

See e.g. Dk. 1, p. 8, ¶ 30; p. 9, ¶¶ 36. and 37, p. 10, ¶¶ 46. and 47; p. 12, ¶ 55 (incorporating prior 

allegations); p. 18, Prayer for Relief (seeking injunctive relief and damages only for use of 

“FLAG”). The Complaint does not expressly or impliedly allege any use or assert any cause of 

action as to Flag’s alleged use of USA FOOTBALL. Nor does it seek any form of relief for any 

such use. See Dk. 1, generally. Flag is accordingly filing a motion to strike all testimony and 

exhibits referenced in that section.

Flag also disputes that it has used its USA FLAG mark in connection with its social media 

platforms in a manner designed to cause confusion between that mark and the marks shown in the 

Tackle Marks. The cited testimony of Mr. Davis does not expressly or impliedly support this 

assertion. FB Ex. 7 [Davis Dep.] at 148:11-25, 209:11-211:6 are merely statements of Flag’s 

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social media platforms.

For the purposes of the Motion and this Response, Flag does not materially dispute the 

other facts stated in § III.E., except, as argued supra, except, as argued supra, the term “football”

does not apply to football.

G. Alleged Depiction as an Olympics-Affiliated Organization and Governing 

Body.

Flag objects to and disputes the relevance of the arguments and the evidence cited in § III.F

regarding its use of the terms “National Championships,” “World Championships,” “National 

Team,” “governing body,” “ultimate governing body,” “national governing organization” or 

“Olympic Division” in connection with any sport, including flag football. Those arguments and 

evidence are also outside of the facts and issues raised in the Complaint. The Complaint’s 

allegations are strictly limited to Flag’s use in commerce of “FLAG.” See cite to FB’s Complaint 

in § IV.F., supra. The motion to strike Flag is filing will also address the testimony and exhibits 

referenced in that section.

Flag also disputes that FB has the exclusive right to use any of the referenced terms, that 

Flag is not allowed to use those terms, and that its use of any of them is false or misleading. Flag

Ex. 1 [Burnett Depo] p. 310:22-311:2; 311:22-312:10; 312:25-313:9. FB does not cite any 

authority nor present any evidence to substantiate its assertion that only members of IFAF, RSOs, 

or others “recognized ... by any external authority” may use those terms. It has not done so because 

that is not the law. FB does not like that Flag has used superlative terms and puffery to elevate its 

marketing as it or many other businesses may do.

FB also implies that Flag’s proposal to Nike that it be “the official and exclusive outfitter 

& uniform partner of the Flag National Team as it prepares the sport for the 2028 Olympics in Los 

Angeles” is false or misleading. § III.E., p. 14. There is nothing false or misleading about that 

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statement. Aside from the fact that this was an ostensibly private pitch deck for Nike’s eyes only, 

Flag clearly identifies that it refers to its own National Team, which, again, is a term that is not 

owned by FB or anyone else. Flag Ex. 1, [Barnett Dep.] 179:15-181:11; 181:22-183:24. The 

statement that Flag is preparing “the sport” for the 2028 Olympics is not false. Flag Ex. 1 [Burnett 

Dep.] 95:18-102:13; 109:6-12. In any event, this statement is similarly irrelevant to FB’s claims 

that Flag infringed on the Tackle Marks through its use of FLAG as it is outside of the allegations 

in the Complaint. There is otherwise no evidence that Nike or anyone else was confused or misled

by the statement.

FB further implies that USA Football’s use of the term “Olympic Division” is false or 

misleading. § III.E., pp. 14-15. Again, FB has not alleged in its Complaint that it owns the 

exclusive right to use “Olympic Division” in connection with flag football or that Flag’s use of 

that term is false or misleading. See Dkt. 1 (‘516 Lawsuit), generally. 

Nor has FB offered any evidence that it or anyone else has the exclusive right to use 

“Olympic Division” in connection with flag football or that Flag’s use of that term is false or 

misleading. Id. FB’s statements on this issue are irrelevant to FB’s claims that Flag infringed on 

the Tackle Marks through its use of FLAG and should be disregarded.

H. Alleged Actual Confusion.

Flag disputes all but one of the bullet point statements in § III.G. as they are not supported 

by proper summary judgment evidence. EDTX Local Rule CV-56(a) and (d). Flag has asserted 

objections to the admissibility of the evidence cited to purportedly support each such statement. § 

II., supra, including Chart Nos. 1-2, 4, 10-13, and 15-18. A person with personal knowledge has 

not authenticated the cited evidence, and they are hearsay and contain hearsay within hearsay. FB 

failed to prove the authenticity and any potential hearsay exception during discovery, and it cannot 

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now cure that failure by erroneously claiming the cited evidence as its own business records.6

Mr. Davis’s testimony cited in the twelfth bullet point in § III.G. is not evidence of 

confusion. He explains that he has been asked about the differences between Flag and FB. FB Ex. 

7 [Davis Dep.] at 132:11-133:3. He even specifically states that the people asking about the 

relationship or differences in the two companies “have never, in [his] opinion, confused us as the 

same brand” and “in terms of confusing us as the same person, no.” Id. at 132:23-24 and 133:2-3.

I. Botner’s Inadmissible Report.

“An ‘expert’s written report ‘is hearsay to which no hearsay exception applies.’ ‘“ Pizza 

Hut, LLC v. Ronak Foods, LLC, No. 5:21-CV-00089-RWS, 2022 WL 3544403, at *3 (E.D. Tex. 

June 17, 2022), aff’d sub nom. Pizza Hut L.L.C. v. Pandya, 79 F.4th 535 (5th Cir. 2023) (citations 

omitted) “These manner of expert reports ‘are out-of-court statements by witnesses offered for 

their truth, and therefore fall within the definition of hearsay in Federal Rule of Evidence 

801(c).’”); Worldwide Sorbent Prod., Inc. v. Invensys Sys., Inc., No. 1:13-CV-252, 2014 WL 

12596585, at *4 (E.D. Tex. Oct. 29, 2014) (“Pre-trial expert reports ‘are hearsay and, absent 

agreement to their admission, are inadmissible.’”). Flag objects to Botner’s report as being hearsay 

and requests that the Court not consider it for the purposes of deciding the Motion.

Flag otherwise disputes Botner’s Report in its entirety as detailed in §VII.A.5. and 6., 

supra.

V. ADDITIONAL UNDISPUTED MATERIAL FACTS

1. The applications for each of the Tackle Marks were filed on the following dates:

- ‘236 Registration – December 16, 2003 - Flag Ex.5;

- ‘472 Registration – December 16, 2003 - Flag Ex. 6;

6 The motion to strike Flag is filing also seeks to strike those portions of the Riley Declaration that claim that a) she 

has personal knowledge that the materials in question were made at or near the time by – or from information 

transmitted by – someone with knowledge, and b) that those materials were made by FB. It is clear from the face of 

these materials that they were not made by FB. In any event, those materials contain hearsay within hearsay, for which 

no exception applies. Flag will also show that FB did not identify the vast majority of the people in the cited evidence 

as persons likely to have discoverable information as required by Rule 26(a)(1).

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- ‘678 Registration – January 12, 2016 - Flag Ex. 7; and

- ‘961 Registration – June 14, 2013 - Flag Ex. 8.

2. The USPTO granted Flag registration on the Supplemental Registration for USA 

FLAG for “[a]rranging and conducting of sports events; [a]ranging and conducting youth sports 

programs in the field of flag football; [s]ports camp services.” Flag Ex. 9. It did not refuse the 

application because USA FLAG for sporting events, including flag football, was not likely to be 

confused with any of the Tackle Marks. 

VI. SUMMARY JUDGMENT STANDARD.

Summary judgment is appropriate when the movant is able to demonstrate that the 

pleadings, affidavits, and other evidence available to the court establish there are no genuine issues 

of material fact, and the moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 

56(c). The movant bears the initial burden to demonstrate the absence of any material fact. Celotex 

v. Catrett, 477 U.S. 317, 332 (1986). If the movant meets that burden, the non-movant must point 

to admissible evidence demonstrating there is a genuine issue for trial. FED. R. CIV. P. 56(e). 

Unsubstantiated assertions, conclusory allegations, improbable inferences, and unsupported 

speculation are not competent evidence. Forsyth v. Barr, 19 F.3d 1527, 1533 (5th Cir.1994). 

Instead, the nonmovant must go beyond the pleadings and by her own affidavits, or by the 

depositions, answers to interrogatories, and admissions on file, designate specific facts showing 

that there is a genuine issue of material fact for trial. Giles v. Gen. Elec. Co., 245 F.3d 474, 493 

(5th Cir.2001) (quoting Celotex, 477 U.S. at 324).

In ruling on a summary judgment motion, the court must consider all evidence and draw 

all inferences from the factual record in the light most favorable to the nonmovant, but the court 

may not make credibility determinations or weigh the evidence. Turner v. Baylor Richardson Med. 

Ctr.,476 F.3d 337, 343 (5th Cir.2007) (citing Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 

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133, 150 (2000)).

VII. ARGUMENT.

A. There are Questions of Material Fact as to Likelihood of Confusion.

“Likelihood of confusion is a question of fact.”7 Gibson Brands, Inc. v. Armadillo 

Distribution Enterprises, Inc., 668 F. Supp. 3d 614, 648 (E.D. Tex. 2023 - ALM).

1. The Tackle Marks do not apply to Flag Football as a matter of law.

The ‘472 and ‘236 Tackle Marks do not apply to flag football because their respective 

applications were filed more than three years before FB began using USA FOOTBALL in 

connection with flag football. See § IV.A., infra. The ‘678 and ‘961 Tackle Marks also do not apply 

to flag football for the reasons stated in § IV.A, infra. 

2. There is a genuine issue of fact as to the level of distinctiveness of the 

Tackle Marks and, therefore, a genuine issue of fact as to the level of 

protection it should be afforded.

“Any given term’s correct [distinctiveness] classification is a factual issue.” Xtended 

Beauty, Inc., 576 F.3d 221, 227 (5th Cir. 2009), citing Soweco, Inc. v. Shell Oil Co., 617 F.2d

1178, 1183 n. 12 (5th Cir. 1980). 

“Marks are normally assigned to ‘categories of generally increasing distinctiveness’: (1) 

generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.’” Xtreme Lashes, 576 F.3d at 

227 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 

615 (1992). “ ‘[W]ithin this spectrum the strength of a mark, and of its protection, increases as one 

moves away from generic and descriptive marks toward arbitrary marks.’” Am. Rice, Inc. v. 

Producers Rice Mill, Inc., 518 F.3d 321, 330 (5th Cir. 2008) quoting Falcon Rice Mill, Inc. v. 

7 In concluding its argument on the “digits of confusion,” FB states that “[t]his factor favors USA Football” or “weights 

[sic] strongly in USA Football’s favor.” Dk. 62, § V.C., pp. 21, 23, 24, 26, and 27. FB is arguing as though the Motion 

is an application for a temporary injunction where a court weighs and considers which party each digit favors. If a 

factor merely favors a party, there is definitively a fact question on that digit. 

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Cmty. Rice Mill, Inc., 725 F.2d 336, 346 (5th Cir.1984) (citation omitted). “To determine the 

strength of a mark, [the court] examine[s] (1) ‘where the mark falls on a spectrum ....’ of categories 

and (2) ‘the standing of the mark in the marketplace. Future Proof Brands, L.L.C. v. Molson Coors 

Beverage Co., 982 F.3d 280, 290 (5th Cir. 2020) quoting Am. Rice, 518 F.3d at 330. 

In USA Football, Inc. v. Robinson, No. H-03-4858 (NFA), In the Southern District of 

Texas, Houston Division (the “Robinson Lawsuit”), FB sought declaratory relief that its use of 

USA FOOTBALL did not infringe on the defendant’s use of the same identical mark, which he 

also used in connection with football-related services. Flag Ex. 16, pp. 1, 7.

8 In the Third Amended 

Complaint, FB judicially admitted, among other things, there were “a number of third party uses 

incorporating the terms ‘USA’ and ‘Football,” including other uses of ‘USA Football.’” Flag Ex. 

16, p. 5. It further agreed “that the geographic designation ‘USA,’ coupled with the generic term 

‘football,’ could not form the basis for trademark rights when used to identify a football team 

comprised of players from the United States.’” Id. Judge Nancy Atlas, ruling on FB’s motion for 

summary judgment, agreed with FB and “ORDERED that Plaintiffs the National Football League 

and USA Football, Inc.’s use of the trademark “USA Football” to promote the sport of amateur 

football at the high school and youth level in the United States does not infringe the rights of 

Defendants Timothy Robinson and USA Football, Inc. because it does not infringe a protected 

trademark, dilute a protected trademark, constitute a false designation of origin, or constitute unfair 

competition as to Defendants[.]” Flag Ex. 17. While the court’s judgment was brief, she performed 

a lengthier analysis in a Memorandum and Order. USA Football, Inc. v. Robinson, No. H-03-4858, 

8 Flag requests that the Court take judicial notice of the file in the Robinson Lawsuit. FED. R. EVID. 201. Flag attaches 

the Third Amended Complaint and the Final Judgment as Flag Exs. 16 and 17. Flag obtained these documents through 

Westlaw. PACER does not have active links for the court’s docket. By the time Flag discovered the Robinson Lawsuit, 

there was insufficient time to obtain copies of other potentially relevant pleadings and motions to attach them as 

exhibits to this Response. Flag intends to continue to attempt to obtain other potentially relevant pleadings and 

motions, such as FB’s Motion for Summary Judgment and its evidence and will supplement the record for this 

Response when it is able to obtain those documents.

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2004 WL 3363843, at *4 (S.D. Tex. Sept. 20, 2004). In that Memorandum, the court noted that 

FB contended that “the trademark ‘USA Football’ is descriptive, and therefore is entitled to 

protection only if it has acquired secondary meaning.’” Id. After a detailed analysis of the facts, 

the court found that “the trademark ‘USA Football’ is properly classified as descriptive under the 

undisputed facts of this case.” Id. at 7. (Emphasis added). The undisputed facts included evidence 

that Robinson’s use of “USA FOOTBALL” had been insufficient to acquire secondary meaning. 

Id. at *1-4.

Flag recognizes that the USPTO found that the Tackle Marks had acquired distinctiveness 

after originally being merely descriptive. Flag also recognizes that the Tackle Marks are now 

incontestable and that it, therefore, cannot assert that they lack secondary meaning. But “

‘[i]ncontestable status does not make a weak mark strong.’” Gibson Brands, 668 F. Supp. 3d at

650, quoting Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986).

The ‘472 Tackle Mark disclaims the exclusive right to use “FOOTBALL.” Flag Ex. 10.

The ‘236 Tackle Mark is a design mark that has a distinctiveness limitation as to “FLAG 

FOOTBALL.” Flag Ex. 11. The ‘678 Tackle Mark is also a design mark that has, like the ‘236 

mark, a distinctiveness limitation as to “FLAG FOOTBALL,” and disclaims the exclusive right to 

use “Football.” Flag Ex. 12. The ‘961 Tackle Mark also disclaims the exclusive right to use 

“FOOTBALL.” Flag Ex. 13.

In addition to the weakness of the Tackle Marks, a “ ‘key inquiry ... is determined by ... 

standing in the marketplace.” Molson Coors, 982 F.3d at 293 (quoted citation omitted). 

“Specifically, evidence of ‘third-party single and multi-word uses’ of a mark tends to show 

weakness. Id. (citation omitted). “[T]hird-party usage involving the plaintiff’s entire mark [is not 

required], but instead only the portion of the plaintiff’s mark that the defendant also uses.” Id. Any 

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strength that suggestive mark may have “is substantially undercut by their lack of recognition in 

the market and widespread third-party use.” Springboards To Educ., Inc. v. Houston Indep. Sch. 

Dist., 912 F.3d 805, 815 (5th Cir. 2019), as revised (Jan. 29, 2019), as revised (Feb. 14, 2019) 

The common term both parties use is “USA,” which is a geographic descriptor. See Vision 

Info. Techs., Inc. v. Vision IT Servs. USA, Inc., 156 F. Supp. 3d 870, 882 (E.D. Mich. 2016). A 

search on the USPTO’s Trademark Search system9 returns 4,321 results for live registrations that 

include the term “USA.” Flag Ex. 14. The system also returns 662 results for a search for live 

registrations that include the term “FOOTBALL.” Flag Ex. 15. “[E]xtensive evidence of thirdparty use and registrations is ‘powerful on its face,’ even where the specific extent and impact of 

the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA 

v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373–74 (Fed. Cir. 2015) (citation omitted).

FB points to four areas that it contends support its claim that the Tackle Marks have a 

strong standing in the marketplace. Dk. 62, § V.C., p. 21. FB does not, however, provide any 

evidence of which of the claimed partners are for tackle versus flag football. Nor does it provide 

any evidence of how many of the players that it has “helped” train and educated were for tackle 

versus flag football. Some of the partnerships are with well-known, if not famous, brands. FB 

presents no evidence from which to discern facts, such as whether any number of the coaches and 

players came to a training event because the NFL, Riddell, or Arena Football League, as examples,

were holding or participating in the event. FB presents no evidence of what it means, in terms of 

strength in the marketplace, to field a team in international competition. And it has not provided 

any evidence of how many teams have been involved, how many spectators have attended, or how 

much revenue has been generated from its flag football tournament. 

9 https://tmsearch.uspto.gov/search/search-information

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USA FOOTBALL, both as a word mark and as used in the design marks, is suggestive. 

“[S]uggestive marks—like descriptive marks—are ‘comparatively weak.’”) Molson Coors, 982 

F.3d at 292, quoting Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 315 (5th 

Cir. 1981). The Tackle Marks are weak suggestive marks and should be given minimal protection.

3. A genuine issue of facts exists as to the similarity of USA FLAG and 

USA FOOTBALL and, therefore, a genuine issue of fact as to whether 

there is a likelihood of confusion.

“Whether similarity of trademarks deceives or is likely to deceive purchasers is a fact 

question.” Coca-Cola Co. v. Cahill, 350 F. Supp. 1231, 1235 (W.D. Okla. 1972), aff’d, 480 F.2d 

153 (10th Cir. 1973). 

“Mark similarity ‘is determined by comparing the marks’ appearance, sound, and 

meaning.” Xtreme Lashes, 576 F.3d at 228. Flag’s “USA FLAG” mark and the Tackle Marks share 

only one commonality – both use the geographic descriptor “USA.” However, the appearance, 

sound, and meaning of each “FLAG” and “FOOTBALL” are not similar at all. The appearance 

and sound of the combined USA FLAG and USA FOOTBALL are similar only in their common 

use of “USA.” Overall, the similarity between these marks is minimal. In any event, a jury should 

be allowed to weigh this factor in connection with its determination of the likelihood of confusion.

FB again points to IFAF’s website to claim that flag football is a well-known subset of 

“American football.” Flag incorporates its arguments and authorities from § IV.B., supra.

4. The degree of care by potential purchasers is a fact question.

The sophistication of potential purchasers of goods and services is a fact question for the 

jury. See Neles-Jamesbury, Inc. v. Valve Dynamics, Inc. (“... Defendants’ argument regarding 

the sophistication of their customers raises a fact question on the potential degree of care factor.)

5. Whether Flag and FB target the same consumers is a fact question.

While there is some evidence that Flag and FB pursue some of the same consumers, that 

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evidence does not eliminate identical crossover. Nor does it prove any specific level of crossover 

in the targeted consumers of flag football services.

6. FB has not proven that there is no genuine issue of material fact on 

whether Flag intended to benefit from any goodwill in the Tackle 

Marks.

FB does not cite any direct evidence proving as a matter of law that Flag intended to 

benefit from any goodwill associated with the Tackle Marks. It relies on, for example, a 

purported right of FB to preclude Flag’s use of the term “Olympics Division.” 

7. The Motion does not present proper summary judgment evidence of 

actual confusion.

None of the documents or testimony FB cites on the question of actual confusion is proper 

summary judgment. See §§ IV.H.-I., supra. The emails, text messages, and other documents it 

claims are evidence of actual confusion, as well as the Botner Report, are hearsay for which there 

is no exception, and contain hearsay with hearsay (The business records testimony in Ms. Riley’s 

Declaration for material created by third parties is demonstrably untrue) and lack proper 

authentication. The Botner report is also hearsay, for which there is no exception. A genuine issue 

of fact exists as to whether there has been actual confusion. Citizens Nat. Bank of Meridian v. 

Citizens Bank of Philadelphia Mississippi, 35 F. App’x 391 (5th Cir. 2002) (Finding that “the 

evidence presented by [the accuser] fail[ed] [on summary judgment] to create a question of 

material fact as to whether customers ... [would] be confused by the opening of [the accused’s] 

branch.”)

8. Questions of material facts exist as to the credibility of Botner and his 

survey.

“[I]t ordinarily is the province of the jury to gauge the expert witness[‘]s credibility and 

the reliability of his data.” Newport Ltd. v. Sears, Roebuck & Co., 6 F.3d 1058, 1069 (5th 

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Cir.1993); Skidmore v. Precision Printing & Pkg., Inc., 188 F.3d 606, 618 (5th Cir. 1999). 

Significantly, Botner’s Report is inadmissible hearsay to which Flag objects. See § IV.I., supra. 

Without waiving this objection, Flag necessarily cites Botner’s Report and data from it to point 

out their flaws and weaknesses in defending against the Motion.

FB relies heavily on the Botner Report to argue that the survey “shows a high rate of likely 

confusion.” Dkt. 62 p. 17-18, 25; Dkt. 62-51. Botner’s survey results claim a net confusion rate of 

25.6% between the Tackle Marks and the USA FLAG Mark, allegedly owing “primarily due to 

name similarity, as well as a similar appearance or design.” Dkt. 62-51 ¶ 84. However, Botner’s 

methodology, categorization of short answer responses, and resulting net confusion rate are 

misleading and fundamentally flawed for many reasons, including several detailed below.

Botner surveyed both source and affiliation/connection confusion with separate questions. 

Botner asked respondents whether any of the four companies’ web pages (USA Flag, USA 

Football, American Flag Football League (“AFFL”), and NFL Flag) “are owned or operated by 

the same company” (Question 1) or whether any of the web pages “are from companies or 

organizations that are connected or affiliated with each other” (Question 4). Dkt. 62-51 ¶ 64, Table 

A & ¶ 68, Table C. A control substituted the control mark “FFWCT” in place of “USA Flag”

(although it should have used a different USA mark to be a suitable control). Follow-up questions 

(Question 2 and Question 5) allowed respondents to select as many web pages as they would like 

(up to all four). Dkt. 62-51 ¶ 66, Table B; ¶ 70-72, Table D. If respondents selected the web pages 

of USA Flag and USA Football, Botner counted them as “confused” in his survey. Dkt. 62-51 ¶ 

72-73, Table E. Botner found that 109 of 253 test respondents were “confused.” See Botner Report 

Ex. 18B. Data File Condensed. If a respondent indicated confusion between USA Flag and USA 

Football (even if AFFL and/or NFL Flag were also selected), they were then asked an open-ended 

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question: “What makes you think that?” (Question 3 and Question 6). Dkt. 62-51 ¶ 74, Table F.

With his report, Botner produced a data file and data map which allowed for review of the 

underlying data.

In categorizing the short answer responses to the “What makes you think that?” questions 

— Botner grouped 23.7% of test respondents into the “name similarity” category. See Dkt. 62-51, 

p. 31, Table F. Examples of the verbatim responses that Botner counted as name confusion include:

ID #21: “Because they have the same name USA in it”

ID #78: “They look similar and both have USA in the name”

ID #151: “Has the word USA Stands out like a sword thumb they don’t call it the United 

States for nothing 

ID #159: “It because it contains the name “USA” and they’re both football related.”

ID #163: “They both have usa in the title and similar tjemes”

ID#319: “both start with USA and have the same colors”

ID#321: “They both say usa”

ID#458: “They both say USA”

ID#476: “Both are “USA” flag football organizations”

ID#495: “there is “usa” in the names which gives me the clue that they are owned by the 

same company/organization”

ID#538 “They are both USA named”

See Ex. 18C, Botner Report Data File Condensed. 

The examples mentioned above, along with others highlighted in Botner’s Report Data 

Table, indicate that the survey primarily detected confusion related to the term “USA” rather than 

considering the marks in their entirety. Overall, fifty-two (52) respondents mentioned the term 

“USA” as the source of their confusion (see Ex. 18C, Botner Data Table). Consequently, nearly 

half10 of the allegedly “confused” test respondents, who were sorted and counted based on “name 

10 One hundred nine (109) respondents indicated that the parties’ websites had common ownership or affiliation. Fiftytwo (52) of those respondents mentioned the common term “USA” as the reason for their selection. As such, the data 

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similarity” in Botner’s survey, were categorized by Botner as finding similarity in the marks solely 

because they both use “USA.”

Similarity of appearance is determined based on the total effect of the mark or designation 

rather than on a comparison of individual features. Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 

252, 260-61 (5th Cir. 1980). When comparing marks, “it is the overall impression that counts,”

Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 502 (5th Cir. 1979), “rather than simply 

comparing individual features of the marks,” Exxon Corp. v. Tex. Motor Exch. of Houston, Inc., 

628 F.2d 500, 505 (5th Cir. 1980); Shen Manufacturing Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 

1242-43 (Fed. Cir. 2004) (similarity or dissimilarity of the marks must be determined by viewing 

marks in their entireties); Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1358 (Fed. 

Cir. 2000) (“The ultimate conclusion of similarity or dissimilarity of the marks must rest on 

consideration of the marks in their entirety.”); see also In re Nat’l Data Corp., 753 F.2d 1056, 

1059 (Fed. Cir. 1985).

When excluding the fifty-two (52) respondents who cite “USA” as the reason for their 

confusion, the test confusion drops from 43.1% to 22.5%,11 and net confusion drops from 25.6% 

to 5.1%.12 This percentage is well below the Fifth Circuit’s generally accepted minimum of 15% 

and creates a significant fact issue as to the likelihood of confusion element. See Dallas Cowboys 

Football Club, Ltd. v. America’s Team Props., Inc., 616 F. Supp. 2d 622, 641 (N.D. Tex. 2009) (a 

confusion rate as low as 15% is generally “within the range accepted by courts...in assessing 

likelihood of confusion.”); see also Exxon Corp. v. Texas Motor Exch. of Houston, Inc., 628 F.2d 

suggests that 47.8% of confused test respondents were confused based on the term USA alone.

11 Botner found test confusion of 43.1% or 109/253. Removing 52 respondents changes the equation to 57/253 or 

22.5%. 

12 Botner subtracts the control confusion rates to derive a net confusion percentage of 25.6% (43.1% - 17.4%). When 

this same control percentage is subtracted from the adjusted test confusion rate that removes respondents who 

answered based on the term “USA” — the result is 5.1% (22.5% - 17.4%).

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500, 507 (5th Cir. 1980) (finding 15% and 23% “strong evidence” of likelihood of confusion); 

Tiffany & Broadway, Inc. v. Commissioner of Pats. & Trademarks, 167 F. Supp. 2d 949, 955 (S.D. 

Tex. 2001) (association by 15% of survey respondents constituted likelihood of confusion).

The way Botner compiled and organized the “confusion” data regarding the term “USA”

raises questions about the credibility of his opinions. Therefore, a jury should be permitted to 

consider his survey and his opinions and assign whatever weight it believes appropriate, if any.

Newport Ltd. v. Sears, Roebuck & Co., 6 F.3d 1058, 1069 (5th Cir. 1993) (“Where ... the district 

court has not excluded expert evidence as inadmissible, it ordinarily is the province of the jury to 

gauge the expert witnesses credibility and the reliability of his data.”); VirnetX Inc. v. Cisco Sys., 

Inc., No. 6:10-CV-417, 2014 WL 12605380, at *5 (E.D. Tex. Mar. 28, 2014) (“The Court may not 

overrule the jury’s assessment of the credibility of the experts or its determination of a factual 

dispute.”).

Additional questions regarding Botner’s survey methodology are raised because Botner 

failed to exclude respondents who selected three or four entities as being “the same company” or 

“affiliated or connected” companies (i.e., FB + USA Flag + NFL Flag and/or AFFL) from the data 

set and confusion calculations. Answers reflecting confusion between three or all entities show 

generalized confusion by the respondent — not confusion specific to FB and USA Flag. This is 

essentially “noise” in the survey results. Because these respondents were generally confused about 

even the buffers (i.e. NFL Flag and/or AFFL), their answers should have been excluded from the 

survey results. These generally confused respondents amount to 47 of the 109 “confused” test 

respondents. Ex. 18D, Botner Data File, 3 or More Entries Selected.

When generalized confusion is removed, and respondents who only selected FB and USA 

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Flag are isolated, the test confusion drops from 43.1% to 24.5%13 and net confusion drops from 

25.6% to 7.1%.14 Again, this percentage is well below the Fifth Circuit’s generally accepted 

minimum and creates a significant fact issue as to the likelihood of confusion element. 

In sum, Botner’s survey methodology and findings raise significant credibility and fact 

issues that a jury should be permitted to consider. The survey, which FB relies on to argue a high 

rate of likely confusion between the USA FOOTBALL Marks and the USA FLAG Mark, shows 

a net confusion rate of 25.6%, primarily due to name similarity. However, the categorization of 

responses and the resulting confusion rate are fundamentally flawed. The survey primarily detects 

confusion related to the term “USA” rather than considering the marks in their entirety, with fiftytwo (52) respondents citing “USA” as the source of their confusion. Additionally, Botner failed to 

exclude respondents who selected multiple entities (FB, USA Flag, NFL Flag, and/or AFFL) as 

being the same or affiliated companies, leading to generalized confusion not specific to FB and 

USA Flag. Excluding these generally confused respondents, the test confusion drops from 43.1% 

to 24.5%, and net confusion drops from 25.6% to 7.1%, well below the Fifth Circuit’s generally 

accepted minimum of 15%. Therefore, the credibility of Botner’s opinions and the likelihood of 

confusion should be determined by a jury.

VIII. THE PURPORTED VICARIOUS LIABILITY OF TRAVIS BURNETT.

The purported liability of Mr. Burnett depends entirely on FB’s success on its claim that it 

is entitled to summary judgment on the issue of the likelihood of confusion. As shown throughout 

this Response, FB has failed to prove that there are no questions of material fact on that issue, and 

13 Botner found test confusion of 43.1% or 109/253. Removing 47 respondents changes the equation to 62/253 or 

24.5%. 

14 Botner subtracts the control confusion rates to derive at a net confusion percentage of 25.6% (43.1% - 17.4%). 

When this same control percentage is subtracted from the adjusted test confusion rate that removes respondents who 

selected three or more entities and showed general confusion — the result is 7.1% (24.5% - 17.4%).

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instead, there are multiple questions of material fact that a jury must resolve to decide whether 

there is a likelihood of confusion. The Court should, therefore, deny the Motion on this point as 

well.

IX. INDIANA’S CONVERSION STATUTE.

Flag was initially sued for infringement in Indiana. Dk. 1, ‘516 Lawsuit. Flag moved to 

dismiss the Indiana court’s personal jurisdiction over the respect constituents of Flag, or 

alternatively to transfer that lawsuit to the Eastern District of Texas pursuant to 28 U.S.C. § 1404. 

Dks. 20 and 21, ‘516 Lawsuit. As a result of that challenge, FB offered to agree to transfer the 

‘516 case to the Eastern District of Texas, Sherman Division. Flag agreed. Dk. 30, ‘516 Lawsuit.

Like the purported liability of Mr. Burnett, a finding in favor of FB on its Indiana 

Conversion Statute is dependent on a determination by the Court that there are no questions of 

material fact as to whether there is a likelihood of confusion. FB has not met its summary judgment 

burden on this issue. There are many genuine questions of material fact on that issue. The Court 

should, therefore, deny the Motion on this point as well due to such questions.

X. PRAYER.

Each of FFWCT, LLC, USA Flag, LLC, and Travis Burnett respectfully request that the 

Court deny USA Football, Inc.’s Motion for Summary Judgment in its entirety and grant them 

such other and further relief to which they are entitled.

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Respectfully submitted,

/s/Bryan Haynes

Bryan Haynes

Texas Bar No. 09283520

Bryan.Haynes@solidcounsel.com

SCHEEF & STONE, L.L.P.

2600 Network Blvd., Suite 400

Frisco, Texas 75034

(214) 649-29511 Telephone

(214) 472-2150 Fax

Mark D. Nielsen 

Texas Bar No. 24062361

Mark.Nielsen@solidcounsel.com

SCHEEF & STONE, L.L.P.

2600 Network Blvd., Suite 400

Frisco, Texas 75034

(214) 472-2100 Telephone

(214) 472-2150 Fax

Michael C. Smith

Texas Bar No. 18650410

Michael.Smith@solidcounsel.com

SCHEEF & STONE, L.L.P.

113 East Austin Street

Marshall, Texas 75670

(903) 938-8900 Telephone

ATTORNEYS FOR PLAINTIFFS FFWCT, 

LLC, USA FLAG, LLC, AND TRAVIS 

BURNETT

CERTIFICATE OF SERVICE

I certify that on June 21, 2024, a true and correct copy of the foregoing was electronically 

filed with the Court using the ECF system, which will send a notification of the filing via electronic 

mail to all counsel of record.

/s/ Bryan Haynes

Bryan Haynes

Case 4:23-cv-00465-ALM Document 75 Filed 06/22/24 Page 29 of 29 PageID #: 2719