Vegas Golden Knights

“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Office Action the team has six months to submit a formal response with legal arguments as to why the refusal should be withdrawn.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.

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Chelsea Wold is an Associate Attorney. Chelsea works with clients in various industries and of all sizes on domestic and global brand protection issues. Chelsea’s practice focuses on intellectual property portfolio management, including domestic and international trademark clearance, prosecution, and enforcement, copyright and trademark counseling. Chelsea received her J.D. degree from the Arizona State University’s Sandra Day O’Connor College of Law with a Certificate in Law, Science and Technology with a focus on Intellectual Property and Health Law. While in law school Chelsea received Pedrick Scholar Honors (dean’s list) and the Distinction for Highest Pro Bono service. She also graduated with dual degrees from the University of Arizona where she earned a Bachelor of Science in Psychology and a Bachelor of Arts in Journalism. Chelsea was on the Fiesta Bowl Queen and Court while in college, serving as a spokeswoman for The Fiesta Bowl Organization. She was also on the dean’s list from 2009-2013. On the personal side, Chelsea has her own blog that she started as a journalism major in college. Creative writing is a hobby and creative outlet for Chelsea.