An attorney with Quinn Emanuel Urquhart & Sullivan can stay on as counsel for the U.S. Soccer Federation Foundation in its trademark dispute with U.S. soccer’s governing body, a federal judge ruled Sept. 25.
Robert Raskopf isn’t conflicted due to prior work on trademarks for the U.S. Soccer Federation because the matters aren’t the same, Judge Timothy J. Kelly wrote for the U.S. District Court for the District of Columbia.
Raskopf had worked for a law firm in the 1980s that registered two trademarks for the federation, “neither of which is at issue in this case,” the court noted.
He later moved to White & Case, which maintained the trademarks at issue in this case for the foundation, it said. Raskopf and another attorney at White & Case who “mainly handled” those trademarks later joined Quinn Emanuel, taking the work with them. In 2011, however, the foundation transferred the trademark work to another firm.
Raskopf and Quinn Emanuel are now representing the foundation in a trademark ownership dispute, the court said.
To disqualify Raskopf because of work for his former client, the federation, it has to show that “an attorney-client relationship formerly existed between Raskopf and the Federation and that the current litigation is either the same or substantially related to Raskopf’s prior representation,” the court said.
Raskopf’s work in the 1980s was “plainly not the same or substantially related” because those trademarks aren’t in dispute here, it noted.
His later work for the foundation “presents a closer question, but the result is the same,” the court determined, because the federation hasn’t established that the current matter is substantially related to Raskopf’s past work.
The prior matter involved the submission of renewal applications and other maintenance filings to the U.S. Patent & Trademark Office for the marks at issue, while the current litigation centers on the ultimate ownership of those marks, “which were initially registered by the Federation without Raskopf or Quinn Emanuel’s involvement,” the court said.
And the record shows he had “very little, if any, substantive involvement in the prior matters,” it said.
The case is United States Soccer Fed’n Found., Inc. v. United States Soccer Fed’n, Inc., 2019 BL 360379, D.D.C., No. 18-2856 (TJK), 9/25/19.