The newest NHL franchise, set to debut in Las Vegas next year, might be considering other names for the team after the United States Patent and Trademark Office (USPTO) rejected the hockey team’s proposed trademark, “VEGAS GOLDEN KNIGHTS”.
In an Office Action issued this week (Dec. 7, 2016), an examining attorney preliminary rejected the mark “VEGAS GOLDEN KNIGHTS” because it was too similar and likely to be confused with the mark used by the College of Saint Rose, “GOLDEN KNIGHTS OF THE COLLEGE OF SAINT ROSE”.
Interestingly, the College of Saint Rose (Albany, NY) doesn’t even have a sanctioned hockey team!
In a statement released following the issue of the Office Action, the franchise said the following:
“There are countless examples of college sports teams and professional sports teams with coexisting names, including Vegas Golden Knights and Clarkson Golden Knights, UCLA Bruins and Boston Bruins, U of Miami Hurricanes and Carolina Hurricanes, etc. We will plan on making these arguments and others in our detailed written response to the office action which must be filed by June 7, 2017.
Office actions like these are not at all unusual, and we will proceed with the help of outside counsel in preparing a response to this one.”
The Office Action also required the franchise to “disclaim” the word “VEGAS” as being too geographically descriptive. Since the team will be playing in Las Vegas, and “VEGAS” is included in the trademark, that portion of the mark impermissibly describes the services and cannot be protected as part of the mark.
Many trademark applicants receive office actions (rejection letters) from the USPTO, and this is merely a preliminary refusal to register the mark. The franchise’s response to the USPTO’s Office Action, which is due in six months, will likely set out the franchise’s position on why it should be allowed to register its mark, regardless of the College of Saint Rose’s mark. The arguments could range from arguments regarding dissimilarities in the marks or the consumers of the marks to the existence of a co-existence agreement.
Team owner Bill Foley has previously said that Clarkson College and the University of Central Florida – both of which are also known as the Golden Knights – consented to his team using the name. Foley has not said whether he attempted to get consent from the College of Saint Rose.
Co-existence agreements (i.e. agreements that both parties can use the marks) are typical, and submitting evidence of such an agreement to the USPTO often gets a proposed mark registered.
Whatever the arguments the franchise may have, individuals and companies alike should remember to conduct thorough due diligence before attempting to register a mark—and before spending significant resources promoting a mark. This will help identify potential conflicts to a registration and use of a mark, allowing for, if necessary, the modification of the mark or the development consent co-existence agreements to avoid office actions or infringement claims.
This is a developing story, so stay tuned for further updates.