Another update on my series of posts following the newest NHL expansion team, the Las Vegas Golden Knights, and the difficult time they’re having prosecuting their trademark applications. The applicant Black Knight Sports and Entertainment LLC (I’ll call applicant “the team”) applied to register LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN NIGHTS in connection with “entertainment services, namely, professional ice hockey exhibitions” and various clothing goods (Application Nos. 87147236, 8714723987147265, and 87147269).

As explained in my most recent post, the USPTO issued an initial refusal of registration for all four applications on several grounds, the most significant being a likelihood of confusion (Lanham Act Section 2(d)) with another registered mark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE & Design, Reg. No. 3188463, which identifies in relevant part, “entertainment services in the form of intercollegiate sports exhibitions,” as well as clothing of various types.

In June, the team responded with some amazingly hefty arguments against refusal. For the clothing goods applications, the argument was 41 pages, plus over 1,300 pages of exhibits. For the clothing goods applications, the argument was 51 pages, plus over 1,600 pages of exhibits.

Last week, the team received both good news and bad news. The Examining Attorney withdrew the refusal for the applications identifying entertainment services–therefore, those marks are now approved for publication. However, the refusal was maintained and continued for the applications identifying clothing goods–those applications are now suspended, due to a prior-pending application for LAS VEGAS BLACK NIGHTS (Serial No. 86526792). Unless the team submits further arguments against suspension (I bet they do), it could be many months or years before the suspension is resolved, as the prior-pending application leads to a chain of four other suspended applications.

Based on the similarity of the arguments in each, it is interesting that the Examining Attorney both maintained its likelihood-of-confusion refusal citing GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE & Design, Reg. No. 3188463, for clothing goods, but at the same time, was persuaded to withdraw the refusal citing the same registered mark for entertainment services. Perhaps it boiled down to the limitation provided by the identification of entertainment services for each, one being for “professional ice hockey exhibitions,” whereas the other identified “intercollegiate sports exhibitions.” On the other hand, the clothing goods are not so limited.  The Examining Attorney highlighted this point in its suspension letter for the clothing-goods applications, stating that “there is no limitation in the application or registration limiting the [clothing goods] to those sold in connection or support of hockey and/or college sports.”

One silver (golden?) lining is that the team’s design-only logo depicting a knight’s helmet (Serial Nos. 87243288, 87243293) was recently allowed by the USPTO and has not been opposed, meaning it should soon progress to registration once a statement of use is processed.

Thus, the team’s helmet-bearing branded merchandise will have at least some protection by a trademark registration.

What do you think about the Examining Attorney’s decisions so far on these applications? Do you agree?

  • James Mahoney

    To my layperson’s mind, this is weird and falls into the category of the “how many angels can dance on the head of a pin” argument.

    As I read this, the trademarks include a clear differentiator, i.e., Las Vegas, Vegas, The College of Saint Rose. To protect the TM, that would mean that those elements would at least frequently, if not almost always, appear with Golden Knights, on apparel for example. So the words alone would clearly differentiate the two.

    Additionally, the graphic representation of the “knight” is so clearly different that neither would be confusing to anyone, except perhaps an Examining Attorney. I s’pose that the college might want to spice up its knight graphic some time in the future, and they may be thinking of that aspect, too. But even if they did, would they not have to revise their trademark registration?

    Also interesting to note on the college website that they seem to use Golden Knights willy-nilly in ways that are outside the TM specimen.

    Finally, I doubt very highly that anyone will ever confuse Albany, NY with Las Vegas, or equate the reach and scope of the market for the two Golden Knights.

    • Tucker Chambers

      Thanks for stopping by and leaving a comment James! Yes, I think some of the Office Action decisions so far are debatable–perhaps in the end, the team will be able to overcome these refusals. Regarding the “Vegas” distinction, a disclaimer of “Vegas” was required, so that may end up carrying less weight. But I agree there are some significant differences between the team’s word marks and the college’s design mark with the knight image, which has many dissimilar elements. On the other hand, it’s arguable that the dominant element in the college’s mark is the large wording “Golden Knights,” which incorporates the entirety of the dominant part of the team’s word marks, so may be be tough to overcome. It will be interesting to see what happens–I’ll keep an eye on this one for further updates.