Note: This was a piece that I wrote for Voice of San Diego. You can see the original post and read the comments here. I am a member and supporter of Voice of San Diego, which is the first local nonprofit digital news organization in the country, fully-funded by volunteer donors and community partners.
Last week, the professional football team that still calls San Diego home filed applications to trademark “Los Angeles Chargers.”
Don’t panic: This doesn’t necessarily mean that the team is moving to L.A.
On Jan. 14, the Chargers Football Company LLC filed applications with the U.S. Patent and Trademark Office to register “LA Chargers” and “Los Angeles Chargers” as trademarks in connection with a variety of goods and services, including merchandise such as toys and apparel, and, of course, “professional football games and exhibitions.”
The team’s filings simply state that the organization has a bona fide intent to use those trademarks at some point in the next few years.
After practicing trademark law for about a dozen years, I can comfortably state there’s a big gap between a bona fide intent to use a trademark and the mark actually being used in commerce. It’s common for companies to file these types of trademark applications for brand names that they may not actually use.
This is because filing what’s called an “Intent-to-Use” application simply reserves, for a limited time, the exclusive right to use that brand name in connection with those goods and services. There’s a very good reason for this. Companies often have products and services in development and are considering a variety of brand names. It would be difficult for companies to go through this branding process if a competitor could simply start using one of those brand names in the meantime. As a result, the USPTO created the “Intent-to-Use” filing. It’s a placeholder.
Maybe the team will actually move to L.A. If so, these applications will turn into trademark registrations based on actual use of the brand names LA CHARGERS and LOS ANGELES CHARGERS. Or maybe the team will stay in San Diego, in which case these trademark applications will be abandoned.
Interestingly, the currently San Diego-based football team isn’t the first party to file a USPTO trademark application for “Los Angeles Chargers.” There are two other current USPTO applications worth taking a look at.
On Feb. 20, 2015, two clever individuals, Russell and Christopher Walton, filed a USPTO application to register the trademark “Los Angeles Chargers” for T-shirts. The application was rejected because it conflicted with the NFL team’s existing registration for the word “Chargers.” So the Waltons changed the goods to “cellular phone chargers.”
Sorry, guys, but you can’t modify an already filed trademark application to add new goods. The USPTO once again rejected the application.
But wait, there’s more. On Oct. 17, 2015, an individual named Vu Hoang Ho filed a USPTO application to register a similar trademark for “television programs in the field of family management and relationships” and “a continuing program about football games.” The application listed the wording as “Los Angeles Chargers,” but included the following logo, which reads “LA Chargers”:
Vu Hoang Ho’s application hasn’t been reviewed by the USPTO yet, but it will almost certainly be rejected for the same reason that the Waltons’ application was: confusion with the NFL team’s pre-existing marks.
Of course, the USPTO doesn’t always get it right. If Vu Hoang Ho’s application is approved, the NFL team will have to go through the trouble and expense of contesting the application. They’re being smart in filing these Intent-to-Use applications, saving themselves the trouble of having to deal with other enterprising trademark filers like Vu Huang Ho and the Waltons.
So we still don’t know if the team is staying or leaving. These USPTO filings won’t provide a lot of comfort to those who want the team to stay in San Diego, but they are no guarantee that the team will be playing in L.A., either.
And before you ask, as of this writing, there are no USPTO trademark applications on file for the trademarks “San Diego Raiders” or “SD Raiders.” Someone contact Vu Huang Ho and the Waltons; they’re missing out on this golden opportunity.