In late November, the Las Vegas NHL hockey franchise, which will begin playing with the National Hockey League (NHL) in the 2017-18 season, announced that it would be known as the Golden Knights. The decision followed recent news reports that the franchise had trademarked a series of names, including Desert Knights and Silver Knights, and many assumed that this would be the last word regarding the team’s name and logo.
On December 7th, however, an office action issued by the U.S. Patent and Trademark Office indicated that the USPTO had refused the registration of U.S. Trademark Application No. 87147239, which would have protected the use of the standard character mark of “VEGAS GOLDEN KNIGHTS” on entertainment services, specifically professional ice hockey exhibitions. The refusal was issued by a trademark examiner because of a concern over what is known as “likelihood of confusion.” In this case the trademark examiner believed there would be a potential likelihood of confusion if the NHL hockey franchise registered GOLDEN KNIGHTS due to an already existing registered trademark held by the College of Saint Rose in Albany, NY. That school holds a trademark, which includes the phrasing GOLDEN KNIGHTS for use with intercollegiate sports exhibitions. The trademark examiner felt registering the Las Vegas NHL hockey franchise’s trademark could be confusingly similar given the overlap in phrasing and the prominence of GOLDEN KNIGHTS in either mark.
An official statement released by the Las Vegas Golden Knights indicates that the franchise intends to respond to the office action by next June’s deadline and that such office actions refusing registration are not that unusual, which is true. Indeed, while most of the popular press has reported that the trademark has been denied by the USPTO, that is simply not true as of this point. The trademark examiner has raised concerns and is refusing registration. The applicant now has the right to respond and try and convince the trademark examiner to reconsider. Even if unsuccessful in dealing with the trademark examiner the Las Vegas NHL team would still have multiple layers of recourse through appeals if they wanted to pursue the matter further.
A quick skim of the wider world of sports reflects the fact that it should not be too difficult for Las Vegas to make the case that both trademarks can coexist. In the four major professional team sports leagues operating in the U.S., there are multiple examples of teams using similar nicknames. For example, the NHL’s New York Rangers franchise uses the same name as Major League Baseball’s (MLB) Texas Rangers franchise. The NHL’s Los Angeles franchise and Sacramento’s National Basketball Association (NBA) franchise are both known as the Kings. Other examples of sports team name overlaps include Panthers (NHL’s Florida franchise and National Football League’s (NFL) Carolina franchise); Giants (NFL’s New York franchise and MLB’s San Francisco franchise); and Jets (NFL’s other New York franchise and NHL’s Winnipeg franchise). There are no doubt other examples of two teams using the same name.
Perhaps an even better example of a team name existing in multiple sports leagues at both the professional and collegiate level is the Cardinals. MLB has the St. Louis Cardinals and the NFL includes the Arizona Cardinals. Further, the NCAA has multiple colleges which use the Cardinals nickname: the University of Louisville, Ball State University and Lamar University are just a few examples of this. Stanford University is known as the Cardinal (singular) for the color not the bird, but in the world of trademark law and likelihood of confusion the presence or absence of an “s” would likely make a huge difference, or so it would seem.
Of course, even without trademark registration, the Las Vegas team could still use the Golden Knights moniker in commerce. This point was underscored by a recent amicus brief filed by the American Bar Association with the U.S. Supreme Court on a case involving disparaging trademarks. Although there are real benefits to having a trademark listed on the USPTO’s principal register, the ABA noted that unregistrable marks still have some federal protections under the Lanham Act to prevent either consumer confusion or misrepresentation of the geographic origin of goods.