In a previous post in this blog, I wrote about some potential trademark issues that business owners may face while their businesses are in the early stages. When I wrote that article, I was primarily thinking of startup business owners who have an interest in avoiding expensive trademark litigation that could put a significant financial strain on a new company. Nevertheless, the lucrative world of major professional sports provided us with a good example of these sorts of issues while educating the public on the trademark process.
Earlier this year, the National Hockey League (NHL) awarded an expansion franchise to Las Vegas, Nevada. The team will begin play in the 2017-18 season and marks the first entrance into the Las Vegas market by any of the four major professional sports leagues in the United States. One of the many tasks that had to be completed was deciding on a team nickname. In the months leading up to the official unveiling, team ownership filed several trademark applications related to the following team nicknames: Silver Knights, Desert Knights, and Golden Knights. On November 22, at an event full of festivity, the franchise unveiled its name: the Vegas Golden Knights.
Unfortunately for the franchise, it’s newly chosen name has been the subject of a few issues since its unveiling. First, there were reports that the Golden Knights name, which is also the name of an elite parachute team for the U.S. Army, might face opposition from the Army. The greater setback came last week, when the United States Patent and Trademark Office (USPTO) denied the team’s trademark application for the Vegas Golden Knights name. The Office Action denying the application can be found here. The registration of the applied-for mark was denied due to a likelihood of confusion with an existing registered trademark. That trademark is held by the College of Saint Rose, which is located in Albany, New York. Their athletic teams are also known as the Golden Knights.
The popular response to a result such as this would be to ask “how do you confuse an NHL hockey team with a small college?” Here’s how:
In testing for likelihood of confusion, the following factors, known as the “DuPont Factors”, must be considered:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use;
(3) The similarity or dissimilarity of established, likely-to continue trade channels;
(4) The conditions under which and buyers to whom sales are made, i. e. “impulse” vs. careful, sophisticated purchasing;
(5) The fame of the prior mark (sales, advertising, length of use);
(6) The number and nature of similar marks in use on similar goods;
(7) The nature and extent of any actual confusion;
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;
(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark);
(10) The market interface between applicant and the owner of a prior mark:
- (a) a mere “consent” to register or use;
- (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party;
- (c) assignment of mark, application, registration and good will of the related business;
- (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion;
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods;
(12) The extent of potential confusion, i.e., whether de minimis or substantial;
(13) Any other established fact probative of the effect of use.
Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (1973)
In this situation, the USPTO focused on the first two factors, regarding the similarity of the marks and the similarity of the services. In analyzing the similarity of the marks, the examining attorney found that the marks were identical in part, specifically the fact that the wording “Golden Knights” was located in the dominant portion of both marks.
In analyzing the similarity of the services, the USPTO found, in producing significant evidence, that the fact that one mark was for a professional athletics team, while the other was for a collegiate athletics team was not sufficient to distinguish the services as different. The USPTO supported this finding by attaching approximately 160 pages of screenshots demonstrating that professional and collegiate teams share athletic facilities, among other statistical comparisons between collegiate and professional sports.
In comparing the application for the “Vegas Golden Knights” and the registered mark for the “Golden Knights The College of Saint Rose”, I think it is important to note the language in which each mark was to be used. The applied for mark of Vegas Golden Knights is for use in connection with, specifically, “entertainment services, namely, professional ice hockey exhibitions.” The registered mark of “Golden Knights The College of Saint Rose” is for “entertainment services in the form of intercollegiate sports exhibitions.” Therefore, both of these marks are intended for entertainment services, related to athletic exhibitions.
Another thing I found interesting in this situation was that the team clearly had some type of analysis done of potential conflicts. According to an ESPN.com article, team owner Bill Foley had indicated that he had received approval for the team nickname from Clarkson University, also the Golden Knights, which is located in Potsdam, New York. With that said, Clarkson University has not registered their mark for the Golden Knights name, It appears that Mr. Foley had not sought such approval from The College of Saint Rose.
So, in the end, what will this mean for the Vegas Golden Knights? Probably not too much. Current reports suggest that they intend to keep selling and using the Golden Knights name. According to NHL deputy commissioner Bill Daly, “[w]e fully intend to proceed as originally planned, relying on our common law trademark rights as well as our state trademark registrations while we work through the process of addressing the question raised in the federal applications.” The team has six months to respond to the trademark denial, during which I suspect they may be able to gain approval from The College of Saint Rose, as they did with Clarkson University.
Obviously, this whole saga does not mean that only one team may use a certain nickname. There are numerous universities with tigers or bulldogs as their mascots. College and professional sports teams can coexist with the same names, such as the UCLA Bruins and the Boston Bruins, or the St. Louis Cardinals and the Louisville Cardinals.
Overall, this seemingly embarrassing moment for the Vegas Golden Knights can serve as a teaching point about the trademark application process to business owners, as well as the general public. At the very least, it will give you a chance to fascinate your friends about trademarks next hockey season when the Vegas Golden Knights appear on a TV screen near
