The Chargers are still in San Diego, but is the team moving to Los Angeles? A clue to the organization’s intentions may be found in its trademark filings. On January 14, 2016, the team filed a trademark application for the mark LOS ANGELES CHARGERS. The application was signed by the Chargers President of Business Operations A.G. Spanos and NFL Senior Vice President Anastasia Danias was listed as the attorney of record. The application is based upon an alleged intent to use the mark with goods and services that would typically be associated with running, promoting and marketing a football team. To file the application, a declaration was made that the team has a bona fide intent to use the mark in commerce. This certainly sounds like the team has an intention to move to Los Angeles.
Should the Chargers indeed want to move to Los Angeles, filing the intent-to-use trademark application promptly was a smart move. The team will want to be in a position to control and protect its use of the mark LOS ANGELES CHARGERS. Although it will likely have strong ongoing rights to the CHARGERS mark and to the various logos and symbols it has used, it will want to be sure that its protection extends to the LOS ANGELES CHARGERS combination. It appears that a couple of individuals may have tried to position themselves ahead of the Chargers with respect to use of the trademark. Vu Hoang Ho of West Covina, California, a Los Angeles suburb, filed a trademark application to register LA CHARGERS in stylized form on October 17, 2015. That application claims actual use of the mark for services including “a continuing program about football games.” However, the mark of the application includes lightning bolt symbols and a stylized version of the word CHARGERS that are highly similar to those already used and protected by the San Diego Chargers. The U.S. Patent and Trademark Office has not yet taken any action on this application, but Mr. Ho’s application is likely to face some difficulties, unless his activities are endorsed by the San Diego Chargers.
Russell Walton of Rancho Cucamonga, California, another Los Angeles suburb, filed an application to register the mark LOS ANGELES CHARGERS initially for use with “T-shirts” on February 20, 2015. Mr. Walton’s application was based on his intent to use that mark with those goods. The Examiner at the U.S. Patent and Trademark Office rejected the application as likely to cause confusion with the registered mark CHARGERS owned by the San Diego Chargers. In an effort to overcome that refusal, Mr. Walton sought to change the goods in the application to “cellular phone chargers.” With those goods, Mr. Walton may have problems with the mark being considered descriptive. Marks that are merely descriptive of a characteristic or quality of the goods with which they will be used are not registrable until the mark has acquired distinctiveness. That is, they are not considered protectable as trademarks until evidence shows that the mark does more than just describe the goods, but also acts as an indicator of the source of the goods. Moreover, it is not permissible under the trademark laws to change the goods in an application after filing the application. Thus, Mr. Walton’s application is currently being refused on this basis.
It does seem that the San Diego Chargers moved quickly enough, and have existing rights in the CHARGERS mark that are strong enough, to establish its rights to the LOS ANGELES CHARGERS mark. What about the St. Louis Rams, who are assuredly moving back to Los Angeles? The Rams also recently filed trademark applications for LOS ANGELES RAMS and LA RAMS based on the teams intent to use those marks on a wide range of goods and services associated with running a football team. However, the Rams still had two existing registrations for LOS ANGELES RAMS in force based upon its ongoing use of that mark in connection with its history as a team that had been based in Los Angeles. Thus, the Rams had a strong base to begin with in “reestablishing” its trademark rights. This didn’t deter all efforts to try to gain advantage from the return. On March 23, 2015, Victor Tyler of Covina, California filed an application based upon his intent to use the mark LOS ANGELES RAMS OF INGLEWOOD. Given the Rams existing trademark rights, it seems unlikely that any registration will result from this application.