Major League A’s Hit a Trademark Speed Bump on Road to Las Vegas

Major League Baseball’s Athletics franchise, formerly the Oakland Athletics, has twice been refused a trademark registration for “Las Vegas Athletics,” setbacks that nevertheless are unlikely to prevent it from carrying the classic moniker to its fifth city.

A US Patent and Trademark Office examiner found the mark “geographically descriptive,” most recently in a Dec. 29 refusal. “Athletics” is merely descriptive—and “appears to be generic"—as applied to a sports team, it said, and consumers would likely perceive Las Vegas as indicating only a city of origin. Prior registrations for “Philadelphia Athletics” and “Kansas City Athletics” don’t help because they differ substantially from “Las Vegas Athletics” by including different cities and graphic features.

The refusals illustrate the hurdles a relocating team faces in maintaining and expanding its rights, with the especially descriptive of nature of the “Athletics” moniker representing a curveball for the team’s trademark counsel. Words or symbols must be able to indicate the source of a product to receive trademark protection, and generic or descriptive ones that consumers read as merely conveying information about the product can’t be registered or protected.

But attorneys say nothing should prevent the club from—sooner or later—locking down a new trademark registration for the nomadic franchise’s brand that’s been a baseball staple for more than a century. That’s thanks to the ability of a merely descriptive mark to acquire the necessary distinctiveness to serve as a source identifier in the mind of the public, such as through advertisements and merchandise sales.

“‘Pick-a-city Athletics.’ If it’s baseball, you know who it is,” IP attorney Mark Sommers of Finnegan said.

If a survey asked the “relevant consuming public"—mainly baseball fans, Sommers said—"'What do you think about the word ‘Athletics’ in connection with baseball teams?’ people are going to be able to identify it irrespective of what city you put in front of it.”

IP attorney Suzanne M. Hengl of Baker Botts agreed the team shouldn’t have trouble establishing the acquired distinctiveness needed for a registration or that the descriptive mark does indicate a particular source to consumers.

The refusal reflects a trend at the PTO to be stricter about descriptive and generic terms over the past several years as part of the effort to curtail the wave of applications from China, according to Hengl. But that still shouldn’t stop the registration of the latest iteration of an Athletics trademark that’s been used prominently for so long, she said.

But it’s still “a bit of a special case,” she said. “We’re at the beginning of what may be a very long road.”

Nomadic Century

The Athletics, popularly known as the A’s, were founded in Philadelphia in 1901 and moved to Kansas City in 1955, then to Oakland, Calif., in 1968. Last year the team began a three-year stint at a minor league ballpark in Sacramento, Calif., with plans to move into an under-construction Las Vegas ballpark in 2028.

Meanwhile, in 2009 the club registered clothing trademarks for “Philadelphia Athletics” and “Kansas City Athletics.”

A PTO examiner rejected the team’s 2024 application for “Las Vegas Athletics” to cover the team and merchandise, saying, with a name as descriptive as “Athletics” is for sports, the bar for establishing acquired distinctiveness is “commensurately high.”

Whether the team should be able to carry the goodwill of the Athletics graphic and other city-marks is a question “ripe” for courts to take up, Josh Gerben of Gerben IP said.

“Why can’t we use everything we’ve been building in this franchise for 100-plus years?” he asked.

But despite the “intellectual appeal” of making new law, the “path of least resistance” is to just start marketing the name and continue to try to overcome the “very solvable problem” posed by the PTO’s rejections, Gerben added.

IP attorney Megan K. Bannigan of Debevoise & Plimpton said trademark examiners can produce inconsistent results. They have to consider the factors for acquired distinctiveness and look at the evidence, she noted.

Ultimately, “the fame and longevity of the Athletics franchise is going to factor into this,” she said. “This is a minor setback.”

Athletes as ‘Athletics’

Sports franchises move all the time, but not all of them come with a name quite like the A’s. Gerben said some examiner pushback is understandable in the process of granting a monopoly on a name. He noted an entity running, say, a Las Vegas Athletics Center might be concerned about being subsumed.

“Even as a trademark attorney, I’d never thought twice about it” not being a protectable mark, Gerben said. But, he acknowledged, “You’re calling a team of athletes ‘the Athletics,’” which is “kind of a silly name” to an outsider.

Sommers said a survey should establish establish consumer perceptions of the mark, adding that the team should trim goods and services it’s trying to cover. The examiner noted the team lumped in goods including aprons, Halloween costumes, music concerts, and dance groups. Narrowing them would allow examination—and a survey—to center on the perceptions of baseball fans rather than the broader public, he said.

“There’s a tendency to go excessively broad” with claimed goods and services, he said, noting that likely confusion and infringement can be established without the expansive list of products in the registration.

Bannigan also said the team remains on solid footing, as its other registrations and common law rights should prove sufficient for any substantial infringement of “Las Vegas Athletics” before the registration comes through.

Hengl said it might not take much to get the application across the finish line.

“It wouldn’t surprise me if even this examiner gives in,” she said. “There might be a change of heart after a supervisor steps in and looks at the overall record before it gets to” an appeals process.