Anyone who follows the National Hockey League (NHL) knows that the Vegas Golden Knights have been having what can only be described as an inaugural season for the record books. Since the expansion team’s first-ever game played October 10th, a 5-2 victory over the Arizona Coyotes in a game featuring an emotional tribute to the victims of the Mandalay Bay shooting a week and a half prior, the team has been on an absolute tear. Vegas is the first team in NHL history to win eight of its first nine games, it leads the NHL’s entire Western Conference about halfway through the season and through January 11th, Vegas’ home record was 18-2-1, prompting fan theories about the “Vegas flu” which may be affecting players from visiting teams.
Now the Vegas Golden Knights are facing a challenge to the team name; a challenge that was rather predictable.
Despite the success which the Vegas hockey team has been experiencing on the ice, the team has had to navigate some legal problems regarding its trademark covering the Golden Knights team moniker. In December 2016, an office action from the U.S. Patent and Trademark Office rejected an attempt by Vegas’ team owner Black Knight Sports and Entertainment to register the standard character mark “VEGAS GOLDEN KNIGHTS” due to the likelihood that consumers would confuse that name with a trademark registered by the College of Saint Rose, which covers the use of “GOLDEN KNIGHTS” for use in commerce with intercollegiate sports exhibitions.
On January 10th, the USPTO’s Trademark Trial and Appeal Board (TTAB) instituted an opposition proceeding against the “VEGAS GOLDEN KNIGHTS” mark, which was filed by the U.S. Army. As has been previously reported, the Golden Knights moniker was chosen for the Vegas team in part because the team’s owner, who graduated from West Point, liked the same name used by the parachute team from his alma mater.
The notice of opposition filed by the Army to challenge the “VEGAS GOLDEN KNIGHTS” mark cites multiple grounds for opposition including priority and likelihood of confusion, dilution by blurring and false suggestion of a connection with an institution.
In the case, the Army is asserting its own unregistered trademark of “GOLDEN KNIGHTS” used in connection with entertainment exhibition services, public relations and recruiting. Although the Army is opposing a standard character mark without a claimed color scheme, it also notes that the Vegas Golden Knights have chosen a similar black+gold/yellow+white scheme on uniforms and advertisements, which are used by West Point’s hockey team, known as the Black Knights, as well as the Tate Rink arena where the Black Knights play. This similar color scheme may further contribute to consumer confusion, the Army argues. The Army further cites to a Washington Post article from December 2016, which quoted Vegas team owner Bill Foley as saying that the team tried to get the West Point Golden Knights parachute team to appear at an event announcing the Vegas expansion team’s name, but that “we couldn’t make it work.”
Should the Army ultimately be successful in its opposition in removing the “VEGAS GOLDEN KNIGHTS” mark from the Federal Register, it’s likely that the team’s name wouldn’t change, at least right away. Indeed, it is possible to use a name in commerce without that name being trademarked. For example, the Washington Redskins did not change their name after the USPTO cancelled its trademark registrations to the name in June 2014, when the agency found that those marks were disparaging to Native Americans.
Of course, the challenge to the trademark on REDSKINS was not of the same sort as this challenge to the use of GOLDEN KNIGHTS. The REDSKINS challenge was on the basis that the trademark was unavailable to be registered based on it being disparaging. Since the USPTO originally cancelled the REDSKINS trademark the Supreme Court has ruled the provisions of U.S. trademark law that prevent the registration of a disparaging mark to be unconstitutional. The Federal Circuit has subsequently ruled that it is unconstitutional to prevent the registration of immoral or scandalous trademarks as well.
This opposition to the use of GOLDEN KNIGHTS is different than the REDSKINS challenge because it is based on the fact that the U.S. Army believes the use to be likely to cause confusion, dilutes the Army’s trademark, and creates a false impression of endorsement or association with the hockey team. Each of those claims could support a lawsuit against the hockey team over their use of the GOLDEN KNIGHTS name in commerce, with or without a federal trademark having been granted.