Phillips Nizer LLP Articles
Lessons from Las Vegas: The Golden Knights and Trademark Registration
For the Vegas Golden Knights, December 7, 2016 may well be a day that will live in infamy: on that date, the United States Patent and Trademark Office (USPTO) rejected their attempt to register the “Vegas Golden Knights” mark on the basis that there is a likelihood of confusion with a previously registered mark, namely the Golden Knights of the College of Saint Rose, located in Albany, New York. Business owners, entrepreneurs, and other creators can learn from the Vegas-based NHL expansion team’s experience with the USPTO.
Under Section 2(d) of the Trademark Act, the USPTO will reject a registration for a mark that so resembles an already-registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. One should keep in mind that trademarks do not exist in a vacuum and are associated with a particular good or service: here, the Vegas Golden Knights were attempt to register the “Golden Knights” mark for use in connection with various types of clothing and apparel; importantly, the College of Saint Rose had previously registered the “Golden Knights” mark in connection with overlapping goods.
In evaluating the application, the USPTO focused on the similarity of the marks, the similarity and nature of the goods, and the similarity of the trade channels of the goods. The Trademark Examiner determined that “Golden Knights” is the “dominant portion of both the registered and applied-for marks.” Importantly, the USPTO noted that the Vegas Golden Knights were attempting to register a standard word mark, with no particular logo or other stylized design as part of the registration. Even though the College of Saint Rose registered a unique design mark, that was no matter for the USPTO: because the Vegas Golden Knights would be free to stylize their mark however they choose, there is still the possibility of confusion with the College of Saint Rose logo. Having established the similarity of the marks themselves, the USPTO concluded that the goods at issue, namely clothing and apparel, are identical, and travel through the same channels of trade. At the risk of using a metaphor from another sport: those three strikes means that, for now, the Vegas Golden Knights are out.
What can the Vegas expansion team do to protect its interest in the mark? An applicant has 6 months to respond to a Trademark Office Action like that issued to the Vegas Golden Knights. Such a submission will try to persuade the Trademark Examiner in the first instance that the similarity of the Golden Knights marks should not bar registration. For example, it may wish to make arguments and cite evidence that no consumer could reasonably confuse a NHL expansion team with a small, local college’s Division II sports teams. In addition, the Vegas Golden Knights will almost certainly want to point out that similar marks are found in sports with some frequency: for example, the UCLA Bruins and Boston Bruins and University of Miami Hurricanes and Carolina Hurricanes have managed to coexist peacefully without confusing sports fans. In addition, other Golden Knights exist, including the Clarkson College Golden Knights, also located in New York. Notably, Clarkson University has reportedly already consented to Vegas’ use of the Golden Knights mark.
Anyone who might consider registering a trademark in the future is wise to consider this situation. Clearly, it is necessary to do a substantial trademark search to identify any already-registered marks that are potentially confusingly similar, before attempting to register (as the Vegas Golden Knights almost certainly did). If possible, it would be ideal to come up with a mark that does not present the same issue and is not similar to an already-registered mark. However, that is not always an option when investment has already been made in a particular trade name, in which case working with other users and registrants of the similar mark and attempting to persuade the USPTO that consumers would not be harmed is the next best option. And don’t forget to mark your calendar: as reminder, you have 6 months to do so or the application will be deemed abandoned.
Originally published on iPFrontline on December 12, 2016.