Background
U.S. All Star Federation, Inc. (USASF) is the national sanctioning body for competitive “All Star” cheerleading — the form of the sport where athletes represent private gyms rather than schools or sports teams. Since 2004, USASF has held an annual Championship Week at Walt Disney World in Orlando featuring “The Cheerleading Worlds,” a season-ending international competition for the highest-level teams. USASF claims two trademarks in connection with the event: THE CHEERLEADING WORLDS, registered on the PTO’s Supplemental Register, and the unregistered common-law mark WORLDS.
Open Cheer & Dance Championship Series, LLC — founded by former USASF members — began hosting its own competing season-end All Star event called “Allstar World Championship” or “Allstar Worlds” in 2020, held at the nearby Orange County Convention Center around the same time as USASF’s event. USASF sued in the Middle District of Florida in December 2021, alleging federal and Florida common-law trademark infringement, unfair competition, and civil conspiracy. During pre-trial proceedings, Open Cheer agreed to dismiss with prejudice an affirmative defense asserting that USASF’s marks were “merely descriptive, lack secondary meaning, and/or are generic,” while separately retaining a general denial of distinctiveness in its Answer.
The district court granted summary judgment for Open Cheer on all claims. It held that Open Cheer was not precluded from contesting distinctiveness at summary judgment, and on the merits it found both marks generic as a matter of law, concluding that any consumer association with USASF was explained by USASF’s former status as the only season-ending All Star championship — not by trademark significance. USASF appealed.
The Court’s Holding
The Eleventh Circuit affirmed on one narrow threshold issue and reversed on the merits. On preclusion, the court held that the with-prejudice dismissal of Open Cheer’s affirmative defense did not bar Open Cheer from contesting distinctiveness at summary judgment. The court explained that distinctiveness is an element of USASF’s prima facie trademark case — a burden USASF always bore — and not a true affirmative defense. A defense that merely negates a plaintiff’s prima facie element is not an “affirmative defense” within the meaning of Federal Rule of Civil Procedure 8(c), and dismissing it with prejudice corrected only a pleading error; it did not operate as a merits adjudication binding on either party. Open Cheer’s properly pled general denial of distinctiveness remained live throughout the case.
On the merits of distinctiveness, the court agreed with the district court that neither WORLDS nor THE CHEERLEADING WORLDS is suggestive: both terms require no imaginative leap to connect them to an international cheerleading championship, and competitors in the sport would likely need those terms to describe comparable events. However, the court found that the district court improperly weighed evidence when concluding the marks were generic. USASF presented a substantial body of evidence bearing on whether the marks are descriptive and have acquired secondary meaning — including evidence of long-standing, substantially exclusive use and significant consumer goodwill built over twenty years — that created genuine disputes of material fact a jury must resolve.
Because a mark need only be either inherently distinctive or have acquired distinctiveness through secondary meaning to be protectable, and because a reasonable jury could find in USASF’s favor on the secondary-meaning question, the panel reversed the grant of summary judgment and remanded for further proceedings.
Key Takeaways
- Dismissing a mislabeled “affirmative defense” with prejudice does not preclude the defendant from challenging an element of the plaintiff’s prima facie case; the burden of proving distinctiveness remains on the trademark plaintiff throughout.
- WORLDS and THE CHEERLEADING WORLDS are not suggestive marks — both terms directly evoke an international-level championship without requiring imagination — but that does not end the analysis if descriptiveness with secondary meaning remains a triable issue.
- A district court commits reversible error at summary judgment by weighing competing evidence on secondary meaning rather than asking only whether a reasonable jury could find for the non-movant; USASF’s evidence of two decades of exclusive use and consumer recognition was sufficient to survive summary judgment.
- Dictionary definitions are proper evidence of a mark’s ordinary significance when assessing distinctiveness, even if not formally admitted via judicial notice.
Why It Matters
This decision reinforces that trademark plaintiffs in the Eleventh Circuit cannot be stripped of their burden of proof — or their opponent’s ability to contest it — through strategic pleading maneuvers. Defense counsel who extract with-prejudice dismissals of mislabeled “affirmative defenses” attacking a prima facie element do not thereby lock in those elements for trial; the plaintiff must still prove distinctiveness, and the defendant may still challenge it through its general denial and at summary judgment.
For sports governing bodies, event organizers, and others who rely on event-name trademarks that incorporate common geographic or competitive terms (“Nationals,” “Regionals,” “Worlds”), the case also underscores that long use and marketplace recognition can rescue a descriptive mark from a genericness holding — but only if the record contains enough evidence to create a genuine factual dispute. Premature summary judgment on secondary meaning, particularly where the plaintiff can point to years of substantially exclusive use, is grounds for reversal.