Even in July, with the heat of summer still blazing, you can’t get away from ice hockey in Minnesota. However, now that the Vegas Golden Knights have settled their dispute with the U.S. Army, it was starting to look like we were running out of hockey trademark news. Thankfully, the National Hockey League came through at the last second, filing a trademark infringement lawsuit on July 23. At issue is the NHL’s rights in the design of its championship trophy, the Stanley Cup, and the defendants’ sale of allegedly infringing beer mugs shaped like the Stanley Cup.

The defendants comprise companies, purportedly all owned or managed by the same individual, operating primarily under the name “The Hockey Cup LLC.” According to the complaint, the Hockey Cup has been selling unauthorized reproductions of the Stanley Cup as well as counterfeit jerseys. The company even applied to register trademarks for THE CUP HOCKEY. The NHL opposed the applications and, in response, the Hockey Cup counterclaimed to cancel the twelve registrations asserted by the NHL on the grounds of lack of ownership, abandonment, non-use, and fraud. With the gloves now off, the NHL chose to escalate the skirmish and sue the Hockey Cup in the Southern District of New York for trademark infringement, false association, dilution, copyright infringement, and unfair competition.

There is a good chance that the Hockey Cup will also assert its counterclaim for cancellation of the NHL’s registrations in the lawsuit. The counterclaim essentially argues that the NHL does not control the actual, physical Stanley Cup, and therefore the NHL cannot have trademark rights in the design of, or name of, the Stanley Cup. Strangely enough, this part of the argument has some truth to it. Since 1893, the Stanley Cup has been controlled by a pair of trustees. In 1926, the Trustees reached an agreement with the NHL, and the NHL has been the sole organization associated with the cup ever since, with continued permission from the Trustees. If that’s true, the Hockey Cup’s claims appear to be a bit of an underdog in this legal matchup.

But does the Hockey Cup’s sale of beer mugs in the shape of the Stanley Cup create a likelihood of confusion with the NHL? The NHL claims in its complaint that it has sold beer mugs in the shape of the trophy in the past, but none appear to be available at the moment. The NHL is selling Stanley Cup shaped ornaments, paperweights, inflatable trophies, miniature crystal replicas, and, for some reason, a popcorn maker. If we’re sticking with the booze, the NHL is selling a shot glass with a picture of the Stanley Cup. But yet, no beer mugs in the shape of the trophy.

To prevail though, the NHL does not need to show that it has lost sales due to the defendant’s conduct. Instead, there must only be a likelihood of confusion as to source, sponsorship, connection, or affiliation. One plausible argument in support of the NHL’s claim is that consumers will mistakenly assume that the mug has been licensed by the NHL.

In fact, one recent case from the Eleventh Circuit is quite relevant to the dispute. In that case, the Savannah College of Art and Design, Inc. sued an unauthorized online manufacturer and seller of apparel that was selling clothing with the school’s name. Savannah Coll. of Art and Design, Inc. v. Sportswear, Inc., 872 F.3d 1256 (11th Cir. 2017). The school sued, but the school could not establish that it began selling apparel with the school’s name before the defendant. Based on this, the district court concluded that the school’s rights in the mark with respect to education services did not provide it with trademark rights in the name for clothing. The district court granted summary judgement to the defendant.

On appeal, the Eleventh Circuit reversed, relying on precedent involving – you guessed it – hockey:

One of our older trademark cases, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends protection for federally-registered service marks to goods. Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow.

As the quote suggests, the Eleventh Circuit is not certain that the precedent was rightly decided. In that decision, the NHL and the Boston team sued a manufacturer to prevent the sale of patches featuring team names and logos. The NHL had registered the marks for hockey game entertainment services, but not for any goods. The court noted the decision has been criticized but never overturned. As a result, the Eleventh Circuit remanded to the district court for further proceedings consistent with the Boston Hockey ruling. The NHL—and any other school, sport team, or other organization with an appreciable amount of merchandising—will want to pay attention to the resolution of the case, and consider filing applications to register their marks for valuable, merchandised products.

In the meantime, we’ll watch the ownership dispute play out between the NHL and the Hockey Cup. While it appears to be a longshot, perhaps ownership of the cup will return to the people of Canada, as some prefer (mostly Canadians). Until then, we’ll leave you with the words of Lord Stanley himself, announcing the creation of the Stanley Cup in 1892:

 

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.

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?

Applying for a federal trademark registration for a name or nickname can be tricky business.  For example, the registration of a mark is prohibited if it is “primarily merely a surname,” meaning that the primary significance of the mark to the public is a surname (such as “Johnson”), unless there is a showing of acquired distinctiveness. See TMEP §§ 1211, 1211.01-.02.  By contrast, registration of marks that identify a particular person (without a surname being the primary significance), such as a nickname or signature, is less restricted.  However, such a registration cannot be obtained by third parties without permission–the identified person must consent to the registration.  See TMEP §§ 813, 1206; Lanham Act § 2(c).  Such consent is required even if the applied-for mark does not clearly use a person’s full name–rather, consent is required “if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used,” which can extend to first names, shortened names, stage names, nicknames, pseudonyms, and even initials.  See TMEP § 1206.01.

For example, in the case In re Sauer,27 USPQ2d 1073 (TTAB 1993), the Board held that registration of a mark BO BALL, used for a sports ball, was barred under Lanham Act § 2(c) without consent to register, because BO is a name that would be associated with the well-known professional athlete Bo Jackson.  As another example, in the case In re Hoefflin, 97 USPQ2d 1174 (TTAB 2010), the Board held that the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT were barred under Section 2(c) without consent to register, because they created a direct association with President Barack Obama.

Last year, the professional hockey player Johnny Gaudreau, who plays for the NHL’s Calgary Flames, obtained a trademark registration for his nickname “Johnny Hockey.”  This trademark registration (Reg. No. 4992448) protects the standard character mark “JOHNNY HOCKEY” for various goods in International Class 25, including several types of clothing, footwear, and headgear.  The application sailed safely to registration without any obstacles, as Johnny Gaudreau provided his consent.  The consent was clearly indicated as required by TMEP § 813, through a statement in the application and a consent agreement that was made of record.

At only age 23, the rising NHL star Johnny Gaudreau made a great business move by obtaining a trademark registration for his well-known nickname–by doing so early, he stands to gain significant revenue throughout his hopefully long career through, for example, clothing lines bearing that mark and lucrative endorsement deals with sponsors to license that mark for merchandise. This type of trademark registration is relatively common among professional sports athletes and celebrities–another recent example is NFL player Johnny Manziel, who filed a trademark application for “Johnny Football.”  Although that application (Serial No. 85839336) hasn’t reached registration yet, Manziel was able to leverage the application alone to negotiate a higher percentage of royalties on sales of gear bearing that nickname.

For those of you following professional sports generally, and hockey in particular, you now know that Winnipeg has a new NHL team called the Winnipeg Jets. The “new” Jets recently unveiled their updated logo which you can see compared to the old logo above. Now, the “new” Jets are not to be confused with the former NHL franchise which entertained hockey crazed Canadians over two decades. No, the "original" Jets team left for Arizona in 1996 in what can only be deemed a Gretzky-esque tragedy. (Hockey in Arizona; how could it go wrong?) The current Winnipeg Jets are in fact the former Atlanta Thrashers.

Now, pro sports franchises jumping cities are not a new thing and it’s often a ridiculously confusing ordeal. For you baseball fans, we have the former Washington Senators who eventually became the Minnesota Twins. However, when the old Senators became the new Twins, an expansion team named the Senators remained in Washington. This team eventually left to become the Texas Rangers. We also have the Montreal Expos who then became the Washington Nationals. For football fans, we have the Cleveland Browns who became the Baltimore Ravens in 1996. This was, of course, after the former Baltimore Colts had defected to Indianapolis in 1984. Cleveland was then awarded a new franchise in 1999 that was known as the Browns. We also have the Cleveland Rams who became the Los Angeles Rams who became the St. Louis Rams.

The question for discussion is what should happen to the trademark rights in these instances. For some of the teams, it looks like registrations were assigned from the old franchises to the new franchises.  (See here and here.) This may very well be valid where the actual franchise is the same; however, query whether it is a valid assignment when the new team has no connection to the old team other than geographical location and/or nickname. Is this an assignment in gross? Additionally, isn’t this a recipe for consumer confusion and if so, should we care? What are your thoughts?