Another update on my long-running series of posts following the NHL’s newest hockey team, the Las Vegas Golden Knights, and their embattled trademark applications for VEGAS GOLDEN KNIGHTS that were filed nearly two years ago.

Most recently I posted about a challenge to the trademark applications by the U.S. Army, who opposed registration of the VEGAS GOLDEN KNIGHTS marks in connection with professional ice hockey exhibitions. The Army alleged likelihood of confusion, among other claims, based primarily on the Army’s prior use of a GOLDEN KNIGHTS mark in connection with the Army’s parachute demonstration team.

The hockey team announced last week that they had settled the dispute by executing a co-existence agreement, in which the Army agreed to withdraw the opposition proceeding and allow the hockey team to register the VEGAS GOLDEN KNIGHTS marks, while the hockey team agreed the Army would continue using the Golden Knights name for its parachute team.

This type of settlement involving a co-existence agreement is quite common in opposition proceedings. It is also not surprising for a couple other reasons. As discussed in my last post, the Army would have had a difficult time establishing the necessary “relatedness” factor for its likelihood-of-confusion claim. Although both parties technically are offering types of “entertainment” services, it would have been difficult to show that professional ice hockey exhibitions and parachute demonstrations are sufficiently related to cause likely confusion.

Furthermore, the financial support for the Army by Bill Foley (the owner of the hockey team) may have been a factor that encouraged an amicable settlement. Foley is a graduate of the U.S. Military Academy at West Point, and is the biggest donor to its athletic program. Due to his $15 million donation, Foley’s name is on West Point’s athletic center.

Now that the Army has withdrawn its opposition, the VEGAS GOLDEN KNIGHTS marks will likely register in the next couple months. This was a difficult road to registration in light of the various Office Actions and other challenges discussed in previous posts. But it was well worth the effort, in light of the high value of the team’s brand, especially due to the team’s quick competitive success and business growth. The Golden Knights made it to the Stanley Cup in their first season, and the team sold more merchandise last year than any other other NHL team.

Another update on my series of posts following the trademark troubles of the NHL’s newest expansion team, the Las Vegas Golden Knights.

Most recently, I posted about the USPTO’s decision to maintain a refusal to register the team’s marks in connection with clothing, LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN KNIGHTS (Applicant Nos. 87147236, 87147265), based on likelihood of confusion with another registered mark, GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE & Design.  Those two applications are now suspended.

Now the team is facing another challenge, this time from the U.S. Army. Last week, the Army filed two Notices of Opposition (see here and here) against the team, opposing registration of both of the team’s marks in connection with its entertainment services, namely, professional ice hockey exhibitions (Application Nos. 87147269, 87147239).  (Technically, the applicant and defendant is the team’s business entity Black Knight Sports and Entertainment LLC, but I’ll just refer to “the team”). The Army alleges grounds of likelihood of confusion, dilution by blurring, and false suggestion of a connection, based primarily on the Army’s prior use of the GOLDEN KNIGHTS mark in connection with the Army’s parachute demonstration team.

Notably, the team’s owner, Bill Foley, was quite vocal about the Army inspiring the team name, since he had graduated from West Point. During the process of selecting his hockey team’s name, Mr. Foley had initially considered “Black Knights,” which is also the name of the hockey team at West Point. However, the team eventually landed on “Golden Knights,” and Mr. Foley implied on a radio show that the name was based on the “Golden Knights for the parachute team” at West Point. Mr. Foley also noted in a newspaper article that he had tried to have the Golden Knights parachute team make an appearance at the team’s name-announcement ceremony, but they “couldn’t make it work.” No wonder why, at this point.

Regarding the likelihood of confusion ground, the Army may have a difficult time establishing the necessary “relatedness” factor. Although both parties technically are offering types of “entertainment” services, it may be difficult to show that professional ice hockey exhibitions, and parachute demonstrations, are sufficiently related to cause likely confusion, despite the nearly identical mark. However, the Army’s ground of dilution and false suggestion of a connection do not require relatedness, although those grounds may also be difficult to establish, for other reasons. For one reason, regarding the dilution ground, the Army would need to establish that its mark is nationally famous, which is a high bar. Nevertheless, regardless of how this proceeding turns out, it will be another significant cost and delay in the team’s quest to register its name.

On the bright side, the hockey team itself is having a record-breaking inaugural season, currently with 29 wins and 11 losses, which puts the team in first place in the NHL’s Western Conference. The team also is the first in NHL history to have won eight of its fist nine games ever. I’m sure the team hopes that its success on the rink will follow through to these trademark proceedings, but that remains to be seen. Stay tuned for updates.