Another update for you on the new Las Vegas NHL team. In my previous posts on this interesting saga (here and here), I discussed the team’s unique marketing and trademark strategy leading up to the announcement last month of the team’s name–the Vegas Golden Knights–particularly the secrecy of the name among three options (Silver Knights, Desert Knights, or Golden Knights).
Just a couple weeks after announcing the name, the team received some bad news regarding its pending trademark applications. The team had submitted applications for the marks VEGAS GOLDEN KNIGHTS (Serial No. 87147236 for various clothing goods and No. 87147239 for entertainment services, namely “professional ice hockey exhibitions”) and LAS VEGAS GOLDEN KNIGHTS (Serial Nos. 87147265 and 87147269 for the same goods and services). The USPTO issued initial Office Actions refusing registration of all four marks.
You may view the Office Action refusals here (goods application) and here (services application) for the VEGAS GOLDEN KNIGHTS applications. (The refusals for the LAS VEGAS GOLDEN KNIGHTS applications are nearly identical). The basis for each refusal is a likelihood of confusion with the registered mark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE (& Design), Reg. No. 3188463.
(Sidenote: In two of the refusals–the ones for the entertainment services–the Office Action also cites Reg. Nos. 4325030 and 4325031, for SYRACUSE SILVER KNIGHTS and a Design mark with the same text, which is most likely a clerical error, as the rest of the Office Action indicates the refusal is based only on Reg. No. 3188463. Perhaps this error is due to the same Examining Attorney also working on the refusal for the SILVER KNIGHTS applications–see Serial Nos. 87147273 and 87147242).
In the refusal, the Examining Attorney makes some strong points regarding a likelihood of confusion. The words in the marks are highly similar, as they each use the identical words GOLDEN KNIGHTS, which appear to be the dominant portions of each mark. The similarity becomes more significant when considering the Examining Attorney’s conclusion that the word VEGAS is not protectable as it is primarily geographical descriptive, and therefore “VEGAS” must be disclaimed.
The Examining Attorney also concluded that the similarities in goods/services support a likelihood of confusion, as I outline below:
- Vegas goods (Serial No. 87147236): “Clothing, namely, bandanas, beach cover-ups, belts, body suits, boxer shorts, caps, cloth bibs, coats, dresses, footwear, ear muffs, gloves, hats, headbands, hosiery, housecoats, jackets, jerseys, leggings, leotards, mittens, nightshirts, pajamas, pants, rain coats, rain wear, robes, scarves, shirts, shorts, skirts, socks, suits, sun visors, suspenders, sweaters, sweatpants, sweatshirts, swimsuits, swim trunks, t-shirts, ties, toques, underwear, vests, warm-up suits and wristbands”
- Saint Rose goods (Reg. No. 3188463): “Clothing, namely shirts, t-shirts, jackets, shorts, pants, caps, hats, baseball hats, sweatshirts, and golf shirts”
- Vegas services (Serial No. 87147239): “entertainment services, namely, professional ice hockey exhibitions“
- Saint Rose services (Reg. No. 3188463): “entertainment services in the form of intercollegiate sports exhibitions”
Note that this is only an initial Office Action, and the team now has an opportunity to submit a formal response with legal arguments as to why the refusal should be withdrawn. The NHL has stated that it will not reconsider the team’s name, that these refusals are a “routine matter,” and that it will formally respond to the Office Actions by the deadline of June 7, 2017. NHL Commissioner Bill Daly stated that registration should be allowed in part because “there is no overlap” as to the sports for which the marks are used. However, identical goods/services are not required, especially where the marks are highly similar–rather the goods/services must merely be sufficiently related such that consumer confusion is likely.
If the USPTO is not persuaded by the response to the Office Action, it would then issue a Final Office Action that refuses registration of the marks. At that point, the next step would be to file a Request for Reconsideration and/or file a notice of appeal to the Trademark Trial and Appeal Board (TTAB). What do you think? Any other thoughts on overcoming these likelihood-of-confusion refusals? Stay tuned for further updates.