A months-long dispute over Kalshi’s use of Liga MX trademarks and club names has landed in federal court.
The Mexican Football Federation (FMF) has taken Kalshi to court. FMF, Mexican soccer’s national governing body, filed suit against the prediction market operator in the Southern District of New York on September 22.
In the lawsuit, FMF asks the court for a temporary restraining order and preliminary and permanent injunctions to stop Kalshi from using the Liga MX trademark and club names. The federation is also seeking damages, including profits it says Kalshi earned from the alleged infringement.
By using the Liga MX trademark, FMF argues that Kalshi could mislead its customers into believing the prediction market is officially affiliated with Liga MX or its clubs.
Kalshi has spent the better part of the past year battling it out in court with regulators over whether state laws can apply to its federally regulated sports event contracts.
The FMF lawsuit opens up a new legal front over Kalshi’s use of sports trademarks, asking how far the exchange can go in using trademarked league and club names to identify the markets it offers.
FMF Says Kalshi Kept Using Liga MX Names After Repeated Cease-and-Desist Letters
At the center of the lawsuit is FMF’s objection to Kalshi using the Liga MX name and club names on its website and apps for prediction markets on Liga MX competitions.
The federation says the exchange has continued to do this despite its repeated requests that it stop. FMF also takes issue with Kalshi’s use of its information to determine the outcomes of those markets.
In the complaint, FMF says, “Kalshi’s market rules designate FMF’s data as the facts that determine whether a wager wins or loses.”
FMF says it never gave Kalshi permission to use its data, the Liga MX trademark, or club names for those markets.
FMF’s dispute with Kalshi started on July 17, when its general counsel, Rafael García Job, sent the prediction market operator a cease-and-desist letter demanding that it stop using the Liga MX logo, club logos, and other protected trademarks.
According to the complaint, when Kalshi responded four days later on July 21, it argued that its use of the Liga MX trademark and club names qualified as nominative fair use. Kalshi removed some logos and added disclaimers, but it kept using the Liga MX and club names.
And with that, Kalshi General Counsel Richard Heaslip told FMF the matter was “closed,” the lawsuit says.
FMF responded again on July 27, reiterating its demand that Kalshi stop using the Liga MX trademark and club names.
Kalshi Head of Litigation Jovalin Dedaj replied on August 6, again invoking nominative fair use and saying the company’s use was limited to “plain-text identification” for its CFTC-regulated markets.
However, FMF didn’t see it that way and retained Blank Rome LLP to handle the dispute in the United States. On August 18, the law firm sent another cease-and-desist letter giving Kalshi 10 business days to comply.
On September 1, the prediction market operator once again rejected FMF’s position, according to the complaint, leaving the two sides at odds over whether Kalshi can use the Liga MX name and club names simply to tell customers what its markets are about.
Kalshi Says Its Use of Liga MX Names Is Fair Use While FMF Points to ‘Pro Baseball’ and ‘MMA’
In the lawsuit, FMF describes Kalshi as arguing that it uses the Liga MX name so customers can clearly identify the subject of each event contract.
In its September 1 response to FMF’s attorneys, Kalshi used Apple as an example to support its position.
The complaint describes one of Kalshi’s new arguments as “an analogy comparing its use of the LIGA MX mark to investment companies such as Vanguard and JP Morgan using the Apple trademark to identify stock investments.”
FMF counters Kalshi’s argument by pointing out that the exchange has found ways to identify other sporting events without using certain protected names.
The complaint notes that Kalshi calls Major League Baseball “Pro Baseball,” refers to the Super Bowl as “Pro Football Champion” or “The Big Game,” identifies MLB clubs by city, and describes UFC events as “MMA.”
Kalshi says the issue is different with Liga MX because Mexican cities have clubs competing in multiple professional divisions, so using only a city name could leave customers unsure which team a market covers.
Since FMF is dissatisfied with Kalshi’s explanations, it is asking the court to stop what it views as the exchange’s continued infringement of its intellectual property.
NCAA Previously Pushed Kalshi to Remove March Madness Trademarks
The Liga MX case isn’t the first time a sports governing body has taken issue with Kalshi’s use of its trademarks.
Earlier this year, Kalshi removed references to “March Madness,” “Sweet Sixteen,” and “Final Four” after the NCAA asked it to stop using the trademarked terms.
The NCAA also challenged the wording Kalshi used for its college sports contracts, including “Outcome verified from NCAA,” arguing that it could lead customers to think there was an official connection between the organization and Kalshi.
The difference between the NCAA situation and what’s happening with Liga MX is that Kalshi removed the disputed terminology after the NCAA’s request, so the dispute never ended up in court. Instead, the platform replaced the trademarked references with generic descriptions, including “Men’s College Basketball Champion.”
Kalshi hasn’t made a similar concession to FMF. While it removed some logos and added disclaimers after the federation’s objections, it continued to use the Liga MX and club names, arguing that doing so was fair use.
And that’s why FMF’s dispute with Kalshi is now in federal court. The case could become an early test of how far prediction markets can go in using sports trademarks to identify the markets they offer.
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