The Chargers announced Thursday morning that the team will move to L.A. – but they made moves to trademark the phrases LA Chargers and Los Angeles Chargers a year ago.

The Chargers Football Company LLC (the company that owns the football team) filed applications with the U.S. Patent and Trademark Office to register “LA Chargers” and “Los Angeles Chargers” as trademarks in connection with a variety of goods and services, including merchandise such as toys and apparel, and, of course, “professional football games and exhibitions.”

Unfortunately for the team, its “LA Chargers” trademark application ran into an issue. On Dec. 20, LA Gear, the ‘80s-era athletic apparel company, filed a Notice of Opposition with the Patent and Trademark Office’s Trademark Trial and Appeal Board related to the apparel portion of the “LA Chargers” application, on the grounds that it conflicts with LA Gear’s trademarks, and is likely to cause consumer confusion as to the source of the goods.

“Likelihood of confusion” is the core of any trademark infringement claim. The law protects the rightful owner of a trademark against new entrants into the market who are using either an identical or, as LA Gear alleges, a confusingly similar mark.

In the opposition, the Chargers are referred to as “Applicant” and LA Gear is “Opposer.” The document lists 22 U.S. trademark registrations owned by LA Gear. The oldest dates back to 1985. Two of LA Gear’s registrations are in the form of logos that consist of the letters “LA” – meaning those logo registrations do not include the word “Gear.”

The opposition states: “Customers and potential customers are likely to believe that Applicant’s Goods under Applicant’s Mark originate from, or are sponsored and approved by Opposer when that is not the case. Any dissatisfaction with Applicant’s Goods would reflect upon and irreparably damage Opposer’s reputation and goodwill embodied in Opposer’s Marks and name.”

Essentially, LA Gear’s legal position is that a new entrant into the market using “LA” as part of its trademark for athletic apparel and merchandise will confuse the public into thinking the goods are from or related to LA Gear. This rests on the longevity of LA Gear’s use of its marks.

LA Gear would have no standing to oppose, say, the LA Dodgers’ marks, because the use of those marks predated LA Gear’s existence, and the two parties’ marks have coexisted for more than 30 years.

Back in 2008, Major League Soccer’s LA Galaxy received a trademark for a logo that includes the words “LA Galaxy.” The Trademark Office records for that application show no opposition filed by LA Gear.

It’s possible that the MLS team may have negotiated a private agreement with LA Gear to avoid these issues, and the Chargers/NFL haven’t been willing or able to do so. It seems more likely that LA Gear’s opposition to the LA Chargers trademark is a new tactic, and that the company intends to test the boundaries of its trademark rights in phrases including the word “LA,” at least as they apply to athletic apparel.

If LA Gear succeeds, they could prevent the Chargers from selling “LA Chargers” branded gear, including, potentially, apparel with just an “LA” logo.

Trademarks containing geographic words or phrases have to clear a high bar to be protected as trademarks, but LA Gear has arguably cleared that bar due to its fame and longevity of use. In the trademark world, we would say that LA Gear’s trademarks have “acquired distinctiveness.”

And, as noted, they have received several trademark registrations over the years.

One side note: It’s important to be clear that this dispute applies only to LA Chargers merchandise, not Los Angeles Chargers merchandise.

The NFL team’s options, now that it’s officially moving to L.A., are to fight this opposition, cut a deal with LA Gear, avoid using “LA” in its branding (and that ship has already sailed, or risk a lawsuit and a court-ordered injunction against using the brand name LA CHARGERS on any apparel or merchandise.

If the Chargers do decide to fight LA Gear’s opposition, they may be able to successfully do so on the grounds that LA Gear, by allowing all the other “LA” entities to do business for all these years, has forfeited the right to claim exclusive trademark rights on “LA” as it applies to athletic apparel.

LA Gear’s claim may be a bit of a stretch, but it’s not impossible that the Trademark Office – or a court, should this dispute go that far – would rule in its favor. With all the drama around the team’s departure from San Diego, I’d bet the Chargers will simply come to a settlement agreement with LA Gear rather than put their incredibly valuable brand at risk of an adverse court ruling.

Neither the Chargers nor LA Gear appear to have publicly said anything about the trademark dispute. The Chargers have until Feb. 16 to file an official response with the Trademark Office.

David Lizerbram is a business law strategist at David Lizerbram & Associates who helps entrepreneurs achieve their business goals and protect their...

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