After calling San Diego home for 56 years, the NFL’s Chargers will move north to become the second team to relocate to Los Angeles in the last couple of years. The recent decision has upset many thousands of San Diego fans, but the ownership must have been contemplating a move for some time as the group filed trademark applications on the name and logo of the LA Chargers in January of 2016. While it was wise of them to file a trademark application in advance to protect its brand, it may have been worth spending a little more time on a trademark search, as their mark has been opposed by a familiar shoe company.
The trademark application had been moving through the United States Patent and Trademark Office for nearly a year before it passed examination and was approved by the USPTO. Following approval from the USPTO however, the mark was published for opposition, as all marks are. The publication period is a thirty-day period when third partyies who might be injured by registration of a mark may oppose registration of the mark. To oppose registration, a third-pary must have standing. In this context, standing means that the complaining party has a personal interest in the outcome of the proceeding. This is to prevent “intermeddlers” from prosecuting proceedings when they don’t have a dog in the fight, e.g., have no legally cognizable interests.
In this case, the LA Chargers’ trademark application was challenged by L.A. Gear immediately after the application was published for opposition. You may recognize L.A. Gear as the shoe company that peaked in popularity in the 1990s, but still produces shoes and has maintained an array of trademark registrations. In its opposition, L.A. Gear claims that there is a likelihood of consumer confusion between its brand name and logos, and what the Chargers are proposing, particularly with the Chargers’ intended logo.
Both logos are of a scripted L.A., with the L to the upper left of the A. The Chargers logo turns the tail of the A into a lightning bolt, while the L.A. Gear logo has a scripted Gear following L.A. with a somewhat similar tail to the Charger’s bolt. Although you might not think there would be a lot of cross over between branding of a shoe company and an NFL team, the Chargers have applied for trademark protection in the class covering clothing, including sneakers. L.A. Gear feels this is enough to infringe on its built up brand equity and possibly lead consumers to believe there is some connection between the two brands.
The Trademark Trial and Appeals Board (TTAB) oversees opposition proceedings and, if L.A. Gear’s opposition moves forward, the TTAB will ultimately make a determination as to whether there is a genuine likelihood of confusion between the marks. In the interim, there will be opportunity for the Chargers to consider changes to its marks or a settlement between the two parties.
As this case illustrates, it’s always wise to get good trademark advice in advance. The Chargers move to Los Angeles will be expensive, but they may not have been considering trademark litigation when they were making plans.