Las Vegas Raiders’ Trademark Application Faces Hurdles at USPTO

By Josh Gerben, Esq.

Every few years a professional sports franchise starts up, moves cities, or changes names. Recently, we have welcomed the Las Vegas Golden Knights to the NHL (a brand-new team), the Los Angeles Chargers in the NFL (formerly the San Diego Chargers) and the not-so-recent New Orleans Pelicans in the NBA (formerly the New Orleans Hornets.)

This year, the Oakland Raiders announced they would be moving to Las Vegas. And with that announcement, third-parties unrelated to the organization rushed to the United States Patent and Trademark Office to file trademark application for similar or identical trademarks to those sought by the professional sports teams.

Even though the Oakland Raiders have been publicly contemplating the move since at least as early as January 2016, the Raiders organization finally filed its trademark applications for LAS VEGAS RAIDERS on August 20, 2016 and on February 14, 2017, but not before at least three applications were filed by others. It is highly likely that the USPTO will deny all of the other applications, but the Raiders will lose a significant amount of time while they wait for the USPTO attorneys to do their jobs and deny the third-party applications. In the meantime, the Raiders will not be able to use the ® registered trademark symbol next to the full phrase LAS VEGAS RAIDERS and will not be able to take advantage of certain protections and legal benefits to owning registered trademarks. While there are certainly good reasons for third parties to file trademarks, trademark applications that attempt to take advantage of another company’s intellectual party are frustrating, time-consuming and are often a waste of everyone’s time and money.

Let’s take a look at the three applications standing in the Raiders way.

The Prior Pending “Raiders” Trademark Applications

Ser No. 86898680 – This Applicant filed for SAN DIEGO RAIDERS on February 5^th 2016. The Raiders did not move to San Diego and Tom’s application is currently being denied because of the Raider’s existing trademarks.

In denying the registration in a “non-final” Office Action, the Examining Attorney specifically stated that

“registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the Raiders of the National Football League (NFL), herein referred to as the “Raiders”.  Although the Raiders are not connected with the goods provided by applicant under the applied-for mark, the Raiders are so famous that consumers would presume a connection.”

This application highlights the delays that “prior pending” applicants can inflict on other trademark applicants. In June 2016, the USPTO first issued the Office Action. Six months passed with no response. The USPTO issued a notice that the trademark application has been abandoned. Then, a month later, this Applicant filed a “Petition to Revive” the dead application on the grounds that he never received the Office Action. The USPTO, in its discretion, gave Mr. Giaquinto six more months to respond. This long delay will further delay the Raider’s pending trademark applications, as the Raider’s pending applications will not be allowed forward until all prior pending applications have been abandoned.

Ser. No. 86912909 –  Four individuals filed for SAN DIEGO RAIDERS on February 19 and have been suspended because of the SAN DIEGO RAIDERS application filed by the Applicant of 86898680 (the trademark application discussed above). If/when the application for 86898680 is formally denied, then the USPTO will likely issue an Office Action denying this application mark because of a false association with the Raiders football team and likelihood of confusion.

Ser. No. 87037288 – Like the others above, the application for SIN CITY RAIDERS was denied because of a “false association” with the Oakland Raiders as well. It was abandoned on April 4, 2017. It remains to be seen whether the applicant will file a “revival” – the applicant has sixty days from the date of abandonment to do so.

But Wait! There Are More People Who Filed “Raiders” Trademark Applications

Those three applications represent the individuals who filed before the Raiders finally filed their own applications. However, that has not stopped people from filing additional applications using the RAIDERS name. An application for LAS VEGAS RAIDER NATION for fabrics, athletic apparel, and imprinting was filed by two individuals on April 6, 2017 based on the “intent to use” the trademark in the United States. Two applications were filed for VIVO LOS RAIDERS  and VIVA LAS RAIDERS. There is also the grim-sounnding RAIDER NATION BLACK HOLE CITIZENS and LV RAIDERS GEAR. This is only a sample – many others have tried (and failed) to register variations of SAN DIEGO RAIDERS, SAN ANTONIO RAIDERS, LA RAIDERS over the past year and a half. All of these will likely be (or already were) denied by the United States Patent and Trademark Office because of their association with the Raiders football team.

Other “Raider” Trademarks

If you search “raiders” in the USPTO database, you get hundreds of registered trademarks containing the word “raiders.” To be clear, the Oakland Raiders organization do not own every instance of the word RAIDER. There are plenty of legitimate uses of the word that is completely unrelated to the football team and, for those, the Oakland Raiders organization and the NFL may take a “wait and see” approach.

For example, a trademark like “RAIDERS BABY, RAIDERS” may reference the Oakland Raiders football team, but it might also be completely separate from the team. From the application history, it appears that the NFL considered challenging the application and either (1) got reassurances from the owners that it had nothing to do with the football team or (2) is simply waiting to see how the trademark will ultimately be used. If it ends up being used in connection with Raiders football, don’t be surprised if a cease-and-desist letter shows up in the application owner’s mailbox.

The Bottom Line: Don’t Attempt to Register Trademarks That Don’t Belong to You

Every year a new story comes out about individuals trying to register the trademarks of professional sports organizations before the sports organization gets around to making filings of its own. The bottom line is that if you are trying to profit off of another organization’s success, your application is likely to be denied and your filing fees wasted.  This is not to say that any of these “raiders” marks may not be legitimate attempts to secure rights in a trademark. For instance, you may have a little league team that has been using the Las Vegas Raiders for decades and is simply attempting to protect its trademark. We do not discourage anyone from protecting a valid trademark. However, before you spend your time and money on a trademark application, you should check with an experienced trademark attorney for a personalized path towards protecting your trademarks.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.