By Joseph G. Vernon, of Miller Canfield PLC
Just a few weeks after revealing its name, logo, and color scheme amidst confetti cannons on the Las Vegas Strip, the Vegas Golden Knights, the National Hockey League’s newest expansion franchise, suffered its first defeat—this one off the ice—at the hands of the U.S. Patent and Trademark Office (“PTO”).
On Dec. 7, 2016, the PTO issued an Office action in which it rejected the Golden Knights’ application to register “VEGAS GOLDEN KNIGHTS” as a trademark. Why? Because consumers might confuse the Golden Knights’ mark with one already registered and owned by The College of St. Rose, a small, private college in upstate New York whose athletic teams are also nicknamed the Golden Knights.
Without a trademark registration, the new franchise’s ability to protect against the unauthorized use of its name and logo is inhibited, and its own use of the name and logo will be subject to challenge.
The “Likelihood of Confusion” Standard
The PTO relied on Section 2(d) of The Lanham Act, which bars the registration of any trademark that so resembles an existing registration that it would likely cause consumer confusion.
The determination of whether an applicant’s mark is likely to cause confusion depends on a number of factors, including the similarities between the marks, the similarities among the goods and services associated with the marks, how those goods and services are marketed and sold, the fame of the prior registered mark, and whether there is evidence of any confusion in the marketplace.
The PTO’s Rejection of the Golden Knights’ Application
The PTO found that the marks are “identical in part” and that they share the same “dominant wording” and “overall commercial impression.”
The PTO also found that the services offered by both the professional hockey team and the college are similar in nature because “both offer entertainment of a kind available in the same venues, broadcast on television, and that is generally available to the same class of consumers.” In support of its findings the PTO cited a number of statistics evidencing the popularity of collegiate sports in general, and noted that since college players are often drafted by professional teams, the same fans typically follow both levels of sport.
The PTO concluded that there was a likelihood of confusion between the two marks and refused to register the Golden Knights’ mark. It referenced an overriding concern not only to prevent buyer confusion, but also to protect the prior registrant “from adverse commercial impact due to the use of a similar mark by a newcomer.”
The Golden Knights’ Next Steps
Will consumers really confuse the trademark of a Nevada-based professional hockey team with that of an upstate New York private college? Will the sales of NHL merchandise really impact the sales of the small college’s merchandise? The franchise now has an opportunity to provide its own answers to those questions by filing a response, in which it will try to demonstrate that its mark and the goods and services it plans to offer are different than, and unrelated to, those offered by the college.
The Golden Knights may point out that The College of St. Rose does not have a hockey team, that its other teams do not play in professional sports venues, that their games are not often televised, and that its athletes are rarely if ever drafted by professional sports teams. The franchise may also be able to show that the college’s merchandise sales are limited to current students and alumni, who will not be confused and whose buying patterns will not be affected by the presence of a similarly named professional hockey team in Las Vegas. The team can point to the many other sports teams that use a “Golden Knights” or “Knights” mark, and provide statistical evidence—if available—of a lack of actual confusion or any potential future confusion.
The Golden Knights may ultimately suggest that while the PTO’s findings could apply more suitably to a major college athletic program, there is no risk of confusion here because The College of St. Rose’s athletic program and brand are not particularly renowned (with no disrespect intended to Jimmy Fallon’s alma mater).
The PTO does not profess to be an expert in every applicant’s field, and it invites rejected applicants to submit evidence and arguments in support of registration in their responses. While the Golden Knights can probably mount a strong argument, the biggest problem the franchise faces is one of timing. Players are set to hit the ice in 10 months and the team is at a critical juncture in terms of completing sponsorship deals, negotiating television rights, and beginning to sell merchandise and drum up excitement in advance of the inaugural season. It will take at least several months to reach a final resolution before the PTO, and a protracted dispute may engender unfavorable public perception, and the ire of the league.
The most likely result will involve the negotiation of a consent agreement with The College of St. Rose, through which the Golden Knights can secure the rights to use the name.
Some have viewed the rejected application as just the latest evidence of a botched launch, citing technical glitches at the release party and last week’s reports that the U.S. Army may not be pleased with the use of the name, since the Army’s parachute team is also nicknamed the Golden Knights.
The name was not selected without care, however. The franchise also applied to register several other marks—including the Silver Knights and Desert Knights—soon after the franchise was awarded on June 22, 2016. It reportedly refrained from using “Black Knights” in deference to the Army’s athletic teams, and “Knights” in order to avoid any conflict with the Ontario Hockey League’s London Knights. Team owner Brian Foley also reportedly cleared the use of the name with the Clarkson University Golden Knights, a school with a storied Division I hockey program.
It is unclear if the team also reached out to representatives at The College of St. Rose, but it is possible that given the college’s lesser athletic profile and lack of a hockey team, it was deemed a lesser risk.
Regardless, as the team stated in a press release, “Office actions like this are not at all unusual.” The rejected application highlights some of the difficulties inherent in selecting a team name and coordinating a splashy announcement, an effort that requires a thorough search of existing trademark registrations, the filing of an application to register the mark, and the negotiation of any required consent agreements.
As published in Bloomberg Law on Dec. 14, 2016.