While Las Vegas has always been an alluring destination to base a pro sports franchise, owners have been reluctant to come to Sin City due to concerns over the ease with which gambling might influence outcomes. But that’s soon to change with the announcement that NHL hockey will be coming to Las Vegas. The team will begin play in 2017 and owners announced the team name as the Golden Knights, but whether that name will survive remains to be seen since the team recently received rejections to their trademark applications by the United States Patent and Trademark Office (USPTO).
Wisely enough, the team filed several trademark applications for its intended name in August, but perhaps didn’t do a very thorough trademark search before filing. After filing for the name Golden Knights in the classes covering entertainment services and clothing, the USPTO rejected the applications based on a likelihood of confusion with several other golden knight related trademark registrations, including the primary citation to a trademark registration for “Golden Knights of the College of Saint Rose”, a private college in Albany New York.
The Saint Rose Golden Knights filed for trademark registration in 2004 and received trademark registration in 2006 in the classes covering entertainment services including sporting exhibitions and clothing, the same classes as the Vegas NHL franchise. The trademark examiner cited the similarity of classes and the marks as a reason for a likelihood of confusion between the two. You might wonder whether there really would be confusion though as several colleges and pro teams share the same mascot. A trademark registration carries a lot of weight however and holding a registration does give the owner a presumption of exclusive rights to use the mark in commerce throughout the nation for similar goods. So the Saint Rose Golden Knights can use their registration as a tool to prevent dilution as well infringement of its mark.
So now the Vegas based NHL team will either have to make an argument to the USPTO as to why there really isn’t a likelihood of confusion, use the name without trademark protection and hope that others won’t sue it for trademark infringement, or change the team name to something that has a better chance of receiving trademark protection. It is possible to use a brand name without federal trademark protection, as the Washington Redskins have been doing after their trademark rights were revoked by the USPTO, but without federal protection you lose out on several important rights. Another option would be to enter into a coexistence agreement of license with Saint Rose, if Saint Rose would be amenable to such an arrangement.
Sometimes it is worth filing a trademark application even if you are aware of challenges that the USPTO may throw at you, but it’s also a good idea to do a thorough search beforehand to make sure you are on good footing. But before committing to a trademark or filing a trademark application, it is always a good idea to seek the advice of competent trademark counsel so you are aware of your risks and can select the best strategy for your business.