DuetsBlog Collaborations in Creativity & the Law

Raiding the Register: Trademarks and Franchise Relocation

Posted in Famous Marks, Infringement, Trademarks

It seems like each year a new sports franchise is threatening to move to a new city. Here in Minnesota, we recently ensured at least 15 more years of the Vikings with the newly opened U.S. Bank Stadium. Before the announcement of the stadium deal, though, each time a veiled threat of the Vikings leaving Minnesota brought back the quote below from the 1988 comedy BASEketball:

Soon it was commonplace for entire teams to change cities in search of greater profits. The Minneapolis Lakers moved to Los Angeles where there are no lakes. The Oilers moved to Tennessee where there is no oil. The Jazz moved to Salt Lake City where they don’t allow music. The Raiders moved from Oakland to LA back to Oakland, no-one seemed to notice.

However some recent reports demonstrate that at least some people care about the Raiders. The team’s recent trademark filings suggest that a move to Las Vegas is a real possibility. On August 20, the team applied to register the LAS VEGAS RAIDERS mark in connection with various clothing items, providing entertainment services, including football games, and other memorabilia.

There is no guarantee that the Raiders will move from Oakland, but of course, there is a chance. And where there is a chance, there’s always someone hoping to strike it rich with a gamble. The Oakland Raiders aren’t the only entities with pending applications for the LAS VEGAS RAIDERS mark. In fact, there are six other pending applications owned by other individuals for the identical mark. Each of the applications below is owned by a different individual person:

  • LAS VEGAS RAIDERS for t-shirts, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for t-shirts, tank tops, sweatshirts and jerseys, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for various entertainment services, including presenting football games, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for athletic shirts, pants, jackets, footwear, hats, caps and uniforms, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for bottoms, footwear, jerseys, hats, pants, socks, and tops, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for shirts, jerseys, polo shirts, sweat shirts, and t-shirts, filed on Jan. 30, 2016; and
  • SIN CITY RAIDERS for various clothing items, filed on May 14, 2016.

My memories from Jan. 29, 2016 are a little foggy, but I have an inkling there may have been a news report regarding a possible move to Las Vegas published on that day.

Each of these applications has been refused registration on the ground that the mark falsely suggests a connection with Raiders from the NFL as well as a likelihood of confusion with the prior registered marks RAIDERS, OAKLAND RAIDERS, and LOS ANGELES RAIDERS, and RAIDERS NATION. None of these applicants are likely to overcome the refusals. All of the applicants will be sad to learn that the $225 – $235 governmental filing fee is non-refundable.

There is also one company (rather than an individual person), Nella Chunky LLC, that has also filed trademark applications just recently on Sept. 2, 2016: one for the LAS VEGAS RAIDERS mark in connection with clothing items and VIVA LAS RAIDERS, also in connection with clothing. Interestingly, this entity claims a date of first use back to March 1, 2015, but even assuming that this is truthful, it won’t help the applicant overcome a refusal based upon the prior registrations owned by the team. While Nella Chunky was more than seven months late to the “get rich quick” party, I at least have to give them credit for the more creative VIVA LAS RAIDERS mark.

Note that these are just the Las Vegas marks. Similar applications have been filed for other geographic locations, including SAN ANTONIO RAIDERS, SAN DIEGO RAIDERS, CALIFORNIA RAIDERS, and SOUTHERN CALIFORNIA RAIDERS.

On a surface level, it doesn’t seem like there is much to learn from these applications, other than the fact that it is difficult to hijack the trademark of a professional sports team. But in reality, these applications provide a valuable lesson if you or your client is on the verge of launching a new product, service, or company: seek trademark protection prior to any public announcements.

The caveat to early filing is that you’ll want to ensure that you will be able to begin using the mark in U.S. interstate commerce within about 3 and a half years. The Trademark Office allows up to 3 years to begin using the mark after the Trademark Office publishes the application and issues the Notice of Allowance. The first six months are free, but every six months thereafter the applicant is required to file a Request for Extension of Time and pay a $150 governmental filing fee.

Although a public announcement for your company may not create as many copycats as an NFL franchise, any public announcement could result in third-parties adopting similar marks for related goods or services. Alternatively, the longer you delay in filing, there is a greater risk that a third-party innocently adopts a similar mark for the same or related goods or services. You or your client will likely be forced to spend the time and effort to oppose the application or petition to cancel the registration. Even then, there is a chance that you may not be successful because it may be difficult to establish a likelihood of confusion depending upon the particular facts. This would create a risk that this third-party could prevent you from registering and/or using the mark. Keeping this lesson in mind could help you or your client avoid expensive headaches later down the road.