NFL fans in San Diego were reminded today that professional sports are, above all else, a business. It’s a message that we were hit hard with in St. Louis just a year ago, when the Rams left to go to Los Angeles. Because they are businesses, the focus of sports leagues and teams is making money. And to protect their most valuable assets, their brands, they also need to obtain trademark registrations for their names. But are teams doing their due diligence when it comes to trademark research?
In this case review, I look at examples of two “new” teams that are having trouble obtaining their trademark registrations: the (just announced) LA Chargers of the NFL, and the Vegas Golden Knights of the NHL. Professional sports teams are worth tons of money. So why haven’t these teams secured their trademarks through registration before branding and going public with their names/logos? Many businesses make the mistake of branding before doing any trademark research, instead of the other way around.
LA Chargers
The Chargers filed their trademark application for LA Chargers in January 2016. Of course, they knew at that point that they might end up leaving San Diego in order to move to Los Angeles. Their application included a ton of products such as office supplies, toys, jewelry, clothing, and even mobile phone applications. After filing the response to a simple office action, it looked like their application would go through.
Unfortunately for the Chargers, their application was recently opposed by the owner of a number of registrations for L.A. GEAR. You may have heard of L.A. Gear, which is a popular clothing brand. They think that the registration of LA CHARGERS for clothing should be denied on the basis that it is confusingly similar with their name when used for clothing. I’m not saying that I agree with L.A. Gear. What I am saying is that it is surprising to me that the Chargers did not do more to take care of this problem ahead of their big move and re-branding announcement.
Speaking of re-branding, let’s talk about the elephant in the room here for a moment:
Can you believe that some people are finding these to be similar logos? Giving them the benefit of the doubt, many people are not happy about the Chargers’ move. However, if the Dodgers wanted to file a trademark infringement suit against them, who would blame them? Bottom line: the Chargers should have done more trademark research before their big re-branding. This would save them the time and effort of any litigation and/or ridicule that may come out of their move to Los Angeles.
Vegas Golden Knights
It was recently announced that Las Vegas would be getting its a hockey team with the NHL. This was a big opportunity for the city. There were months and months to plan for the team, do the necessary trademark research, and come up with a name that could be registered with the Trademark Office.
The team filed a number of trademark applications for VEGAS GOLDEN KNIGHTS in late August 2016. They then announced the name to the public on November 22. But just a couple weeks later, the Trademark Office issued a rejection on their various applications. The Trademark Examining Attorney found that VEGAS GOLDEN KNIGHTS was confusingly similar to GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE. Of course, attorneys for the Vegas Golden Knights can try to argue and persuade the Trademark Office that the marks are not so similar. They can appeal the decision to the Trademark Trial and Appeal Board if they are unsuccessful. But again, you would think their name is something that should have been locked down prior to a major announcement.
Conclusion
These major sports franchises have the money so that they can probably handle any trademark disputes that are thrown their way. But the struggles they are having with naming and branding their teams demonstrates a common problem for new businesses: not doing the trademark research up-front. New business owners are excited to brand. They invest in a graphic designer to come up with a fancy logo without doing a trademark search of the name they are using. This is a backward approach.
Don’t fall in love with a name as the first step to starting your business. Don’t spend big on designing a logo before you have done your homework. Come up with several potential names that you like. Then try looking for businesses in the same field using a similar name on Google. Use the USPTO’s TESS system to do a “knockout search” on the name. If you haven’t found any conflicts, speak with a trademark attorney about having a professional comprehensive trademark search done on your chosen name. Most importantly, just don’t move your business to LA for the promise of a better stadium.
Are You Trying to Choose a Safe Name for Your Business?
If you would like for me to assist you with researching a name for your business that will be registerable with the Trademark Office, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
