We are joined by Desiree Sainthrope, a distinguished legal expert with a keen eye for the intersection of trade, intellectual property, and emerging technologies. Her extensive experience in global compliance provides a unique lens through which to view the recent preliminary trademark rejection for the “Las Vegas Athletics.” Today, we will explore the nuances behind this decision, delving into why a name can be considered both too generic and too specific. We will also discuss the legal path forward for the team, examining how a brand builds the “acquired distinctiveness” necessary for protection and what this means for anyone thinking of printing up their own merchandise in the meantime.
The patent office ruled “Las Vegas Athletics” is both generic and geographically descriptive. Could you break down what each of those terms means for a sports team and explain the practical difference between a descriptive name like “Athletics” and a more arbitrary one like “Red Sox”?
Certainly. The core purpose of a trademark is to identify the source of a product, not the product itself. The ruling touches on two key prohibitions. First, a mark can’t be “generic.” Think of it this way: you can’t get a trademark for the word “cereal” to sell cereal. It simply describes the product category. The word “Athletics” falls into this trap because it’s a generic description of what the team is—a group of athletes. This is fundamentally different from a name like the “Red Sox,” which is arbitrary and doesn’t describe the players or the sport. Second, a mark can’t be “primarily geographically descriptive.” You can’t trademark “Boston cookies” if you’re just a baker in Boston, because it merely states where the product is from. The Patent Office found that “Las Vegas” and “Vegas” simply describe the team’s new location. When you combine the generic term “Athletics” with the geographic descriptor “Las Vegas,” you get a name that, at this initial stage, fails to function as a unique brand identifier.
The team successfully registered “Oakland Athletics” by establishing what is called “secondary meaning.” What specific evidence or milestones would the team need to demonstrate to prove they have achieved this same “acquired distinctiveness” in Las Vegas? Please walk us through that process.
That’s the crucial next step for them. “Secondary meaning,” or what the law calls “acquired distinctiveness,” is the exception to the rule. It’s a way of proving that, through extensive use, the public no longer sees the name as just a generic or geographic description. Instead, consumers associate “Oakland Athletics” exclusively with that one specific Major League Baseball team, not just any athletic club from Oakland. To achieve this in Las Vegas, they have to build a new record from scratch. The process isn’t about a set number of years, but about reaching a tipping point in the public consciousness. They will need to show they have been operating, marketing, and playing in Las Vegas long enough that when people hear “Las Vegas Athletics,” they think of this MLB team and nothing else. Evidence for this could include extensive marketing materials, news articles, sales figures for official merchandise, and, most powerfully, consumer surveys showing that a significant portion of the public makes this specific connection. Right now, the problem is simple: they haven’t been there yet.
The Boston Marathon successfully defended its name by proving a long and exclusive association with its event. How does a brand-new team relocation compare, and what lessons can the Athletics draw from that legal precedent as they build their new identity in Nevada?
The Boston Marathon case is a fantastic example of secondary meaning in its most powerful form. The court, in that case, recognized that after more than 100 years of history, the name “Boston Marathon” was no longer just a description of a race in Boston. It had become synonymous with the specific event run by the Boston Athletic Association. The key lesson for the Athletics is that this status is earned, not granted. The marathon’s success came from a long and exclusive association. The Athletics are at the very beginning of that journey in Las Vegas. They can’t import the secondary meaning they built in Oakland. They have to prove that “Las Vegas Athletics” has a distinct identity in its new market. The precedent shows them the goal: to use the name so consistently and exclusively that it overcomes its descriptive nature. It’s a roadmap, but it also highlights that they have a long road ahead to build that kind of unshakable brand association in Nevada.
This ruling is just a preliminary rejection. What are the team’s immediate options to challenge this decision, and what kind of evidence, such as consumer surveys or marketing data, would they need to gather to make a compelling case on appeal?
This is absolutely not the end of the line; it’s more of a procedural speed bump. The team has several immediate options. They don’t have to just accept this and change their name. They can challenge the decision directly within the Trademark Office. Their first move would likely be to submit evidence arguing that they have already started using the name in commerce in a way that builds distinctiveness. More powerfully, they could commission a consumer survey. This would be a formal study designed to show that a significant percentage of consumers in the relevant market already associate the name “Las Vegas Athletics” with their specific team, not a generic concept. If the initial examiner isn’t persuaded, they can appeal to the Trademark Trial and Appeal Board. And if they still don’t succeed there, they have the option to take their case all the way to the Federal Circuit Court of Appeals. It’s a long process, but it’s definitely not over yet.
Some might see this ruling as a green light for selling knock-off merchandise. Can you explain the difference between registered trademark protection and common law protections, and detail why a counterfeiter would still likely lose a lawsuit brought by the team?
This is a very common and dangerous misconception. The lack of a registered trademark does not mean there is no trademark at all. In the U.S., trademark rights are established through use in commerce, which creates what we call “common law” rights. While registration on the Principal Register provides significant advantages—like additional damages and a presumption of validity—the underlying common law rights are still very powerful. If someone were to start selling bootleg “Las Vegas Athletics” gear, they would be creating a high likelihood of consumer confusion, which is the heart of trademark infringement. The team could absolutely sue them under common law, and frankly, they would almost certainly win. I worry someone will misinterpret this ruling and make a very costly mistake. The Athletics can and will enforce their rights, and a judge is highly likely to agree that the bootleg merchandise is intended to trade on the team’s reputation.
What is your forecast for the “Las Vegas Athletics” trademark?
My forecast is that this is ultimately more of a hassle and a delay for the team than a long-term, significant threat to the brand. They will almost certainly secure the registration eventually. The most likely path is that they will begin operating in Las Vegas, build up a record of use, and then re-apply with a mountain of evidence showing they have achieved the necessary secondary meaning. Over time, as they play games, sell merchandise, and become part of the city’s fabric, the association between the name and the team will become undeniable. The Trademark Office will then see a very different set of facts. While they might face some legal costs and administrative headaches in the short term, I fully expect that in a few years, “Las Vegas Athletics” will be a federally registered trademark.
