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Now that the Army has withdrawn its opposition, the VEGAS GOLDEN KNIGHTS marks will likely register in the next couple months.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.

The weekend of October 20-21, 2017, the Minnesota Golden Gophers and North Dakota Fighting Hawks traded wins in one of college hockey’s most competitive series. While watching the NCHC broadcast, an ad for the “Sioux Shop” appeared on screen. The ad explained that the Sioux Shop sells North Dakota fan gear at Ralph Englestad Arena (affectionately referred to by North Dakota fans as “the Ralph”), the 400,000 square foot, first-class hockey palace in Grand Forks where the Gophers and Hawks were facing off. I was surprised by the ad, especially in view of the fact that the University of North Dakota is no longer referred to as the “Sioux.”

Picture credit: Pinterest.

The Sioux Shop ad also reminded me of a recent experience I had when flying Southwest Airlines, in which a gate staff member was wearing a Fighting Sioux lanyard. As many frequent Southwest fliers can attest, Southwest’s employees often wear memorabilia of their favorite sports teams. I asked the staff member where she got the lanyard, as it appeared to be new. She replied that the University is still licensing the mark so as not to abandon it and that she picked it up from a licensed merchandiser. Apparently, you can also buy Fighting Sioux gear on Amazon.

As many hockey fans know, the University recently changed its mascot to the Fighting Hawks, from the Fighting Sioux, after backlash from the NCAA and a statewide ballot initiative approved the change. The “Fighting Sioux” is also one of several arguably-disparaging marks based on Native American culture that have been criticized in recent years. For example, the Fighting Sioux trademark is similar to the R-word trademark, which was challenged and later upheld by the U.S. Supreme Court this summer. With this political and legal background in mind, I thought to myself when watching the Sioux Shop ad, “Didn’t North Dakota change it’s sports mascot to the Hawks, and, if so, why does the fan shop still bear the ‘Sioux’ name? Can NCHC, an NCAA conference, even run an ad for a shop selling merchandise bearing a name similar to one that the NCAA singled out as ‘hostile or abusive’?” Just what is going on here?

It turns out that the Southwest staff member was right: the University still licenses the Fighting Sioux trademark so as to avoid abandonment. The reasons appear to be threefold: First, the University agreed in a 2007 settlement with the NCAA that it would maintain the Fighting Sioux trademark. Second, the school appears to be concerned that if it does not license the trademark and control the flow of Sioux merchandise, someone will flood the market and stymy efforts to phase in the Fighting Hawks mascot and phase out the Fighting Sioux mark. Ironically, then, in order to effectively stop using the Fighting Sioux name, the University must “use” the mark. Third—and perhaps this is unfair cynicism—money.

The Lanham Act provides that a trademark may lose its viability through abandonment when the holder of the mark both discontinues use of the mark and intends not to resume use of the mark. See 15 U.S.C. § 1127. The law states that nonuse for three consecutive years is prima facie evidence of abandonment. See id. Clearly, the University hasn’t run into that issue yet. However, the issue that the University does face is whether it is making a “bona fide use” of the Fighting Sioux mark “in the ordinary course of trade, and not made merely to reserve” its right in the mark. Id. Reductions in the use of a mark may contribute to a finding of both prongs of the abandonment test. So can failure to take action against infringers. Of course, whether a reduction in use and a change in the scope and extent of licensing shows abandonment depends on the facts and circumstances of each case.

The University’s current licensing strategy definitely toes the blue line on bona fide use. It appears that the University is only licensing productions of 9,000 pieces of merchandise at a time and in limited auctions. Such small offerings surely dwarf those available to fans in the years leading up to the mascot switch. On the other hand, the offerings are in the same category: sportswear. The geographic range of the sales is also smaller than before. In addition to the practically-discontinued use of the mark, the University’s licensing also seems disingenuous. One reason for maintaining the mark is to control the supply of Fighting Sioux gear competing with Fighting Hawks gear, and I’m not sure that purpose shows intent to use the Sioux mark (rather than mere reservation of it). I’m also skeptical that using the mark is helping transition efforts; as one source reports, new Fighting Sioux gear has been known to sell out very quickly, and fans continue to cling to the name–not to mention the Ralph, which has over 2,500 Sioux logos plastered throughout the arena in fulfillment of its late eponymous benefactor’s desire to protest a mascot name change.

Whether the University’s current use of the mark can stave off the threat of abandonment, while at the same time render the Fighting Sioux mark obsolete, remains to be seen. For now, North Dakota hockey fans are stuck between two mascots, and neighboring rivals look on in confusion, with no clear end in sight.

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?

As an attorney, one of my most oft-committed sins against the art of persuasion is forgetting that brevity is key. Get in, deliver your message, and get out.

In contrast, concise delivery of a message is something that good branding and advertising generally excel at. I say "generally," because as I was sitting at/in/on/around/near Mall of America Field at Hubert H. Humphrey Metrodome watching the Minnesota Vikings de-pants the New York Giants to get the #2 Seed in the NFC playoffs, I began to think of other sponsorship mouthfuls that make me question whether any message really gets transferred to the recipient. Given my football frame of mind, the only thing I could think of was the horrendous rebranding of the Chicago Bears as Bears football presented by Bank One.

But, that also get me thinking about some sponsorship "eyefuls" which often leave me confused. For example, there’s this:

(If you prefer live action…)

This…

And this:

While I can’t claim to be an expert on advertising expenditures, it seems to me that budgets may be better spent trying to distinguish yourself, rather becoming another voice in a sea of noise.