“Viva Las Hockey!” Didn’t Elvis say that?
In June 2016, Las Vegas was awarded its first professional sports team–hockey. The National Hockey League (NHL) announced that the first new expansion team in over fifteen years would be located in Las Vegas.
Then in November 2016, the team announced its new name, “Vegas Golden Knights,” and everything’s real cool…right? (Pun intended.)
Well not exactly.
On December 7, 2016, just a few weeks after announcing their name the newly minted hockey team received some bad news–the United States Patent and Trademark Office (USPTO) rejected the Vegas Golden Knights’ trademark application and issued Office Actions on the pending marks.
The basis for the refusal is a likelihood of confusion with the registered mark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE.
In the refusal, the Examining Attorney makes a strong argument for likelihood of confusion. The attorney notes that the marks are highly similar and that they each use the identical words of “GOLDEN KNIGHTS,” which seem to be main components of each mark. (And the similarity grows even stronger when you consider the exclusion of the word Vegas, because Vegas in the trademark world must be disclaimed because it is “primarily geographically descriptive.”)
Given that this is an initial Office Action the team has six months to submit a formal response with legal arguments as to why the refusal should be withdrawn. The NHL has stated that it is not going to reconsider the team’s name, and that it will formally respond to the Office Action by their deadline to respond of June 7, 2017.
Bill Daly, NHL Commissioner, expressed his thoughts saying that the registration should be allowed because “there is no overlap” as to the sports for which the marks are used. However, in trademark law identical goods and/or services to an already existing mark is not required. But rather the standard for likelihood of confusion between marks is whether the marks are substantially similar, and the goods and/or services sufficiently related that consumer confusion is likely.
If the USPTO is not persuaded by the team’s response to the Office Action, it would then issue a Final Office Action that refuses registration of the mark. If this were to happen the team would then have to file a Request for Reconsideration and/or file a notice of appeal to the Trademark Trial and Appeal Board.
The Vegas Golden Knights may literally and figuratively be skating on thin ice.