According to recent reports, the Chargers will announce this week that they are leaving sunny San Diego for also sunny Los Angeles. Over a short two year span, Los Angeles will have gone from zero NFL teams to two NFL teams, as the Rams moved from St. Louis to Los Angeles just last year. However unlike the Rams, the change may extend beyond zip codes, as the team is also reportedly considering a full rebrand of the team. This will mean crowds of sad San Diegans, a number of discarded powder blue jerseys, and a lot of wasted governmental filing fees paid to the U.S. Patent and Trademark Office.
Yes, each time a sports team moves cities, a number of people rush to file trademark applications. Perhaps they have a great idea for a team name and want to be the person that named the team. More likely, however, is that there is a hope they can “get in first” and force the team to buy the application from them. Back in September when the Oakland Raiders publicly considered moving, there were no less than six applications filed for the LAS VEGAS RAIDERS mark over a 48 hour period.
Unfortunately for those applicants (and others with similar plans), the applications are likely dead in the water. Unlike some countries where trademark rights are given out on a “first to file” basis, in the U.S. trademark rights are created through use of the mark in commerce. This requirement was relaxed slightly to allow for “intent to use” applications, where a party can file an application based upon its intent to use the trademark in commerce, even if they haven’t begun use yet.
However, when Congress created the new rules, there was concern that persons may abuse the system by applying for trademarks for the sole purpose of selling them to third-parties for increased sums. In order to prevent this from happening, the law requires that an applicant have a “bona fide” intent to use the trademark in commerce. Even if an applicant obtains a registration, that registration may be vulnerable to cancellation if the applicant did not have a bona fide intent to use the mark as of the filing date.
As you might imagine, trying to claim rights to the LA BOLTS mark to sell to the Chargers organization is not likely to qualify as a bona fide intent to use. This is particularly true if the application seeks protection in connection for “professional football team exhibition services.”
So if you’re considering capitalizing on the Chargers move to LA by filing a new trademark application, please reconsider. If you instead just want the glory of naming the newest NFL team, take to Twitter instead. If it worked for the RRS Boaty McBoatFace, it could work for you, too.