The Chargers football franchise’s plan to move just two hours north from San Diego to Los Angeles has been incredibly rocky since the January 12th announcement. The people of San Diego are far from happy about it, and there seemed to be a lot of confusion over the new official logo. The team is also facing a legal challenge. Sneaker company L.A. Gear—popular in the 90s for Velcro-strapped high-tops and light up sneakers—has filed a Notice of Opposition with the Trademark Trial and Appeal Board against the L.A. Chargers’ trademark application. The Chargers Football Company filed an intent-to-use application for the trademark LA CHARGERS last January, for use with several classes of goods, including football apparel and merchandise, jewelry, and toys, and for use as a service mark.
L.A. Gear filed the Notice of Opposition the same day the application was published to the U.S. Patent and Trademark Office’s Official Gazette. The sneaker company has several trademarks registered currently. It opposed the football franchise registering LA CHARGERS for use with the class of goods for apparel. L.A. Gear listed priority registration and the likelihood of confusion as the grounds for the opposition, and cited several of its word marks, including L.A. GEAR and LA GEAR for use with apparel and footwear, and several design marks.
In the Notice, L.A. Gear described itself as a company that has been producing footwear, apparel and other merchandise for a very long time, stating that its oldest registered trademark dates back to 1982, which was the argument for its claim of priority. It further said its marks have “a valuable reputation by virtue of the excellence of the goods and services sold under the same.” For the likelihood of confusion argument, L.A. Gear said that the Chargers’ mark was confusingly similar to the ones it has registered, and that the Chargers plan to sell merchandise and apparel in similar classes as L.A. Gear through the same channels. Therefore, consumers coming across the goods of both companies would believe that the LA CHARGERS merchandise was either produced or approved by L.A. Gear. “Applicant’s Mark…for use in connection with Applicant’s Goods in Class 25 will diminish and dilute the distinctive quality of Opposer’s famous marks identified hereinabove,” L.A. Gear also said in the notice. “Any dissatisfaction with Applicant’s Goods would reflect upon and irreparably damage Opposer’s reputation and goodwill embodied in Opposer’s Marks and name.”
The Chargers are only trying to register a standard character mark, without any regard to font style, color or size, and specifically disclaimed ownership of “LA.” Based on L.A. Gear’s trademark opposition history, the company seems to take issue with any applicant’s attempt to register a mark using “LA” with apparel, footwear, and other types of merchandise. It has previously filed Notices of Opposition against other notable applicants, including the United States Olympic Committee for LA 24 and LA 2024, the L.A. Clippers for LA CLIPPERS, The Doors for L.A. WOMAN, and Forever 21 for LA FOREVER LOS ANGELES.
The L.A. Chargers have until February 16th, 2017 to file an answer to the notice.
For more information on the trademark application process, please contact The Fried Firm.