Pena v. Miami Heat Limited Partnership.

Background

Joel Pena, proceeding without a lawyer, alleged that he owned trademark rights in CULTURE TV ®, CULTURE TV™, and CULTURE™. He sued Miami Heat Limited Partnership, NBA Properties, Inc., and Nike Inc., asserting claims under the federal trademark statute, the Lanham Act; common-law trademark and unfair-competition claims; and unjust enrichment claims.

Miami Heat filed counterclaims seeking declaratory relief and cancellation of Pena’s federal and Florida trademark registrations. Miami Heat alleged that people associated with the Miami Heat basketball team had used “Heat Culture” publicly since around 2015, and that Miami Heat had sold apparel bearing “CULTURE” since at least the 2016–2017 season. It also alleged that Pena did not begin publicly using or selling apparel under the marks until 2024, and that he may have falsely represented earlier use in trademark applications.

Pena’s Motion

Pena moved to dismiss Miami Heat’s counterclaims under Federal Rule of Civil Procedure 12(b)(6), which tests whether the opposing party has stated a legally sufficient claim. He argued that Miami Heat’s declaratory-judgment claims duplicated its affirmative defenses, that the counterclaims lacked factual support, and that the state-law theories were preempted, or displaced, by federal law.

At this stage, the court had to treat Miami Heat’s well-pleaded factual allegations as true and draw reasonable inferences in Miami Heat’s favor. The court was deciding only whether the counterclaims were plausible, not weighing evidence or determining the ultimate merits of the trademark dispute.

Declaratory Judgment

The court ruled that Miami Heat’s request for a declaration was not merely a duplicate of its defenses. Miami Heat alleged that it intended and was able to continue using the marks. The court concluded that a real dispute would remain even if Pena withdrew his claims, because Miami Heat could still face uncertainty about its right to use the marks.

Priority and Senior Use

The court held that Miami Heat plausibly alleged that it was the earlier user of the relevant marks. Miami Heat alleged continuous marketing, sales, and expansion of CULTURE-branded products from approximately 2015–2017 onward, including more than 100,000 products with total sales exceeding one million dollars. Accepting those allegations as true, the court found a plausible claim that Miami Heat had senior, bona fide use and priority.

The court also accepted, for purposes of the motion, Miami Heat’s allegations that Pena’s use began no earlier than June 2024 and possibly not until September 2024. The court emphasized that Pena could present evidence later if the case proceeded, but that the court could not resolve the factual dispute on a motion to dismiss.

Cancellation Claims

The court ruled that Miami Heat plausibly stated claims to cancel Pena’s federal and Florida trademark registrations. It concluded that whether Miami Heat’s use was merely decorative or “ornamental” was a fact-intensive question that could not be resolved at this stage.

The court also found that Miami Heat plausibly alleged a likelihood of confusion because the marks used by the parties shared the word “CULTURE,” appeared similar in font and style according to the pleadings, and were used for similar goods. The court did not decide whether confusion actually existed.

Miami Heat also plausibly alleged cancellation based on fraud. It claimed that Pena represented to the United States Patent and Trademark Office and Florida authorities that he had used the marks as early as 2017, even though, according to Miami Heat, he did not make bona fide commercial use until 2024. The court held that, if proven, those allegations could show knowing and material misstatements.

Finally, the court held that Miami Heat plausibly alleged abandonment. Miami Heat claimed that Pena did not use the marks for three consecutive years and lacked a basis for maintaining rights from 2017 through 2024. The court explained that trademark rights depend on use and that three consecutive years of nonuse can create a rebuttable presumption of abandonment.

Preemption

The court rejected Pena’s argument that federal law preempted Miami Heat’s counterclaims. It explained that the federal cancellation claim was authorized by the Lanham Act, while Miami Heat relied on Florida law for cancellation of Pena’s Florida registrations. The court therefore concluded that preemption did not bar the counterclaims.

Disposition

The court denied Pena’s motion to dismiss. The order did not decide whether Miami Heat ultimately has superior trademark rights, whether Pena’s marks were abandoned, whether any filing was fraudulent, or whether consumers were actually likely to be confused. It held only that Miami Heat had alleged sufficient facts for its declaratory-judgment and cancellation claims to proceed at the pleading stage.