April 20, 2019

April 19, 2019

Subscribe to Latest Legal News and Analysis

April 18, 2019

Subscribe to Latest Legal News and Analysis

April 17, 2019

Subscribe to Latest Legal News and Analysis

NHL’s Vegas Golden Knights’ Trademark Application Refused Due To Likelihood of Confusion with the College of Saint Rose Golden Knights

In June 2016, the National Hockey League (NHL) announced that Las Vegas would be awarded an NHL franchise team, the first major professional sports team in the city and the first new expansion team for the NHL in over fifteen years.  The team announced its name in November—the “Vegas Golden Knights.”  But just a few weeks later, on December 7, the team’s trademark application for the name in connection with “entertainment services, namely, professional ice hockey exhibitions” was refused by the U.S. Patent and Trademark as likely to be confused with a registered trademark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE, owned by the College of Saint Rose, a Division II member of the NCAA with no hockey team.

The examining attorney perceived the “GOLDEN KNIGHTS” portion of both marks to be dominant and confusingly similar in both appearance and with respect to the nature and trade channels of services.  According to the examiner, the stylization of the registered “GOLDEN KNIGHTS” mark appeared larger and centered, causing “the College of Saint Rose” to appear as a mere “tagline.”  Similarly, the examiner considered “Vegas” in the NHL’s “VEGAS GOLDEN KNIGHTS” to be a mere geographical description of origin of goods or services and also less dominant.  The examining attorney thus found the marks identical in their most prominent portions and confusingly similar when compared as a whole.

The Office also refused the NHL’s application because the services associated with both marks involved entertainment in the form of sports exhibitions, even though one concerns professional hockey and the other general collegiate sports.  The examiner explained that services need not be competitive, just related in some manner so as to convey the mistaken belief that the goods or services come from the same source. Therefore, because both services (professional hockey and collegiate sports) are similar (both are televised, have large followings, are in some instances even played in the same large arenas, and college players are drafted into professional leagues), the examining attorney found the applied-for mark and the registered mark to have confusingly similar services.

The Vegas Golden Knight’s trademark application is not dead, however.  The team intends to respond to the office action within the allotted 6-month time frame.  There could also be a legitimate case to be made by the Vegas Golden Knights that the two trademarks can coexist.  For example, many sports teams share the same name and own trademarks related to that name in athletic services.  For example, the New York Rangers (NHL) and the Texas Rangers (MLB) use a similar “Rangers” name, and both have registered trademarks to those names.  The New York Rangers have active design plus words and typed drawing marks for “New York Rangers” in connection with clothing, novelty items, and professional ice hockey exhibitions.  The Texas Rangers have a variety of registrations for a design plus words mark containing “T TEXAS RANGERS” in connection with clothing, novelty items, and entertainment services such as baseball games.  Certainly the same similarity analysis could apply to these marks, yet they have been allowed to coexist.  Thus it seems likely that the Vegas Golden Knights might prevail and obtain federal protection for its VEGAS GOLDEN KNIGHTS mark, perhaps even in time for its first season next fall.

©1994-2019 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

TRENDING LEGAL ANALYSIS


About this Author

Brad Scheller, Mintz Levin Law Firm, New York, Intellectual Property and Litigation Law Attorney
Member

Brad focuses his practice on patent disputes in Federal District Courts and at the US Court of Appeals for the Federal Circuit.  With over 12 years of experience, Brad has handled disputes involving a variety of technologies, including electrical components, electronic payment and financial systems, computer software and various consumer products, including cosmetics, video game systems and personal watercraft.

Brad also has significant experience representing clients in inter partes review (IPR) and cover business method patent review...

212-692-6761
Tiffany Knapp, Mintz Levin Law Firm, Intellectual Property Attorney
Associate

Tiffany concentrates her practice on intellectual property litigation, with an emphasis on patent cases. She uses her background in computer science and mathematics to help clients in matters at the International Trade Commission and in Federal District Courts.

Prior to joining Mintz Levin as an Associate, Tiffany was a law clerk to Clerk Joseph Stanton of the Massachusetts Appeals Court. During her last year in law school, prior to graduation, Tiffany worked as an Intern to Mintz Levin’s IP practice. She assisted with the preparation of and research for documents to help clients strategize the use of their patent portfolio, such as a market-specific patent litigation and damages awards report. Tiffany researched effects of Supreme Court decisions and the America Invents Act on the rights and litigation strategies of patent holders, and prepared memoranda and drafted publications related to the development of standard setting organizations and their impact on patent policies.

617-348-4927