L.A. Gear, the shoe brand most well-known for its introduction of lights embedded in the soles of its sneaker, has been very busy over the years at the U.S. Patent and Trademark Office (USPTO).
While the brand does not enjoy the pop-culture status it once had in the 80’s, its continued robust trademark enforcement campaign has raised eyebrows. Recently, L.A. Gear opposed the trademark applications of the NFL teams based in Los Angeles (the L.A. Rams and the L.A. Chargers). An article written by ESPN (which quoted Gerben IP attorney Josh Gerben) raised the question of whether a shoe company can really lay claim to the letters “L.A.”?
Can a Company Own Trademark Rights in ‘LA’?
L.A. Gear, Inc. owns registrations for a number of “LA”-formative marks- ranging anywhere from multiple variations of “LA Gear”, to L.A. Tech, to simply “LA” and even “So…LA.” These marks are primarily in connection to footwear, although some claim rights in clothing, and even eyewear.
With this in mind, the objective of U.S. Trademark Law is to protect consumers from confusion (and to allow companies to invest in their brand.) To prevent this confusion and allow for this investment, a trademark registration allows the owner to claim exclusive rights to use a mark in connection with specified goods and services. However, trademark rights are not unlimited. These rights are limited to allow one trademark to co-exist with other trademarks as long as the average consumer is not likely to be confused.
But how do we measure ‘likelihood of confusion’? It’s difficult, but one thing that judges and courts look at is how ‘strong’ a mark is. The stronger the mark, the wider the protection. Through its numerous trademark oppositions filed with the USPTO Trademark Trial and Appeal Board (TTAB), L.A. Gear, Inc., is trying to establish the strength of its mark. This attempt crumbles, however, when you consider that most everyone in the universe knows that “L.A.” is short for “Los Angeles,” the number of other organizations that use the “L.A.” (or similar) mark, and the weakness of the mark, as a whole.
L.A. Gear’s Enforcement Efforts Reviewed
Currently, L.A. Gear, Inc. has seven opposition matters pending before the USPTO TTAB and over 100+ matters on record, nearly 25 of which were filed in the past year alone. An opposition is a challenge to a pending trademark application – here, L.A. Gear is claiming that they own a trademark that pre-dates other uses of allegedly similar trademarks.
The opposition filings lay out arguments in which L.A. Gear, Inc. is claiming that it owns “L.A.” for apparel.
Oppositions Pending Before the TTAB as of October 3, 2018:
- Mark Opposed: LA2LA /LA2LA Designs (Proceeding No.: 91243438 / Filing Date: 09/05/2018)
- Mark Opposed: FIGHT FOR LA /Chargers Football Company, LLC (Proceeding No.:91242797 / Filing Date: 07/31/2018)
- Mark Opposed: MEETROYL.A /Fusa International.Inc (Proceeding No.: 91241818 / Filing Date: 06/12/2018)
- Marks Opposed: SPORTIE LA & SPORTIE LA /Isack Fadlon (Proceeding No. 91234748 / Filing Date: 05/25/2017)
- Mark Opposed: LA RAMS /The Los Angeles Rams, LLC (Proceeding No.: 91232538 / Filing Date: 01/19/2017)
- Mark Opposed: LA CHARGERS /Chargers Football Company, LLC (Proceeding No. 91232118 / Filing Date: 12/20/2016)
- Mark Opposed: LA /The Los Angeles Lakers, Inc. (Proceeding No. 92060632 / Filing Date: 12/23/2014)
Many critics have noted, however, that L.A. Gear, Inc. would be unsuccessful in such pursuits because “L.A.” is primarily a geographic term that refers to the city of Los Angeles. “L.A.”- formative marks offer a narrow scope of protection for the L.A. Gear brand. These rights are far narrower than those needed to successfully oppose a trademark application for the NFL’s LA RAMs or LA CHARGERS. Even though both of these applications include claims for apparel, it’s very unlikely the average consumer would confuse an article of clothing branded by the LA Rams, and one branded by L.A. Gear.
Furthermore, as previously discussed, trademark rights only provide protection for a mark in connection with a specified type of goods or services. Many of the L.A. Gear, Inc. registrations are limited to footwear or apparel.
While it may be easy to target smaller, less well known organizations, it’s possible L.A. Gear, Inc. may find the NFL and its teams will be able to bring significant legal firepower to the table to combat these claims.