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Intent to Use Application, Lanham Act, Service Marks, Trademarks

WHY ARE THE SAN DIEGO CHARGERS TAKING PRE-EMPTIVE ACTION TO PROTECT THEIR RIGHTS IN FUTURE TRADEMARKS?

Football Play Strategy Drawn Out On A Chalk BoardThe football world is abuzz with the possible relocation of the San Diego Chargers to Los Angeles. Background for Team Move.  While the outcome of where the Chargers end up is of short term interest, the more interesting question business owners should ask is: Why did the team file “intent to use” applications  Section 1(b), Lanham Act for federal registration of two possible marks with the United States Patent and Trademark Office (“USPTO”)? 1/  The answer is that the Chargers want to block others from hindering their future adoption of the new marks if the relocation happens.

Like the Chargers, if you plan to start a new business or to make other changes in the services or goods offered, it would be wise to take the precaution of filing “intent to use” applications with the USPTO to reserve rights in the desired marks.

Typically, a business acquires enforceable rights in a trademark by actually using the mark (i.e., displaying it) in commerce in close association with the goods and/or services being offered. But what happens when a business owner has future plans which may include adoption of a trademark?  It may take some time before the new goods or services are launched and the trademark is then considered to be “in use” and eligible to become a registered trademark. However, in the interim, a competitor or opportunist could adopt a similar mark and thereby foreclose the business owner from moving forward. This is precisely what the Chargers wished to avoid by filing intent to use applications with the USPTO.

Here is how this pre-emptive strategy can be accomplished. The Lanham Act 15 USC 1051(b) allows a party to file an application (i.e, “intent to use” application) with the USPTO whereby the applicant states it has a good faith intention to use the mark sometime in the future. By filing this application, the applicant gains an effective date from which its retroactive ownership rights can be calculated, provided that the application successfully proceeds to federal registration of the mark. 2/

The Chargers benefit from having make these proactive applications because the team has prevented anyone else from trying to gain advantage from the team’s future trademark needs.

Interestingly, on February 15, 2016, an individual filed an intent to use application (“February 15th application”) for the mark “Los Angeles Chargers” (Serial No. 86-540594) in connection with “cellular phone chargers.” Given the broad range of goods and services that the Chargers claim would be associated with their two proposed marks  3/, unless the Chargers choose to abandon these applications in order to adopt different  marks, it is doubtful that the February 15th application will overcome the USPTO’s “likelihood of confusion” scrutiny. 15 USC 1125 (a)

The takeaway for business owners planning new marketing strategies or new service/product launches is to file appropriate intent to use applications with the USPTO to assure that the desired marks will actually be available when needed.

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1/ On January 14, 2016, the owner of the team filed intent to use applications for the proposed marks: “Los Angeles Chargers” (Serial No. 8687544) and “LA Chargers” (Serial No. 86875043).
2/ Filing an intent to use application gives the applicant time to launch their branding program. Even at the stage where the USPTO asks for proof that the mark is being used in interstate commerce, the applicant may request up to 5 six month extensions to provide the proof. However, unless the applicant timely completes the application process, it will not acquire the protections afforded to a federally registered mark. Abandonment of Application
/3 The San Diego Chargers’ intent to use applications cover 6 classes of good and services including football gear, jewelry, posters, clothing, toys and entertainment services.

About Law Office of Barbara I. Berschler

In addition to advising my clients about general business matters associated with business formation and operation, I counsel for-profit and not-for-profit organizations about the protection and use of intellectual property.

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