On December 7th, the Vegas Golden Knights trademark was denied by the United States Patent and Trademark Office (USPTO) because of “likelihood of confusion” with the College of St. Rose Golden Knights.
There are countless examples of college sports teams and professional sports teams with coexisting names including the UCLA Bruins and Boston Bruins, University of Miami Hurricanes and Carolina Hurricanes, etc. We will plan on making these arguments and others in our detailed written response to the office action which must be filed by June 7th, 2017. -Team Statement on December 7th
That statement, which consists of 1347 pages of argument, examples, and exhibits, has been prepared and sent to the USPTO for review. (If you feel like going through the whole thing, it can be found here.)
The response cites four reasons as to why “Vegas Golden Knights mark is not likely to be confused” with the College of St. Rose Golden Knights.
(1) sports fans (and the general public) have long been accustomed to distinguishing between unrelated sports teams using the same or similar nicknames and trademarks;
(2) more specifically, sports fans (and the general public) have long been accustomed to distinguishing between GOLDEN KNIGHTS and KNIGHTS marks for sporting events;
(3) sports fans, by their very nature, are knowledgable about the games they choose to watch and attend; and
(4) the parties’ marks differ materially in appearance, sound and commercial impression.
The response goes on to give hundreds of examples from the Arizona Coyotes and University of South Dakota Coyotes sharing name, to comparing 22 different trademarks with the word “knights,” to even citing an erotic movie theatre that shares its name with a family movie theatre (Mini Cinema).
For all of the reasons set forth above, Applicant respectfully requests that the refusal to register on the basis of likelihood of conclusion be withdrawn and that the subject application be approved for publication.
So now, the USPTO will review the response, and will make a decision whether they will overturn the refusal and grant the Vegas Golden Knights their trademark, or uphold their original decision and continue to refuse the trademark based on likelihood of confusion with the College of St. Rose Golden Knights.
In the event the decision is not reversed, all is not completely lost for the Vegas NHL franchise, and they will not necessarily have to change their team name. A “trademark coexistence agreement” could be reached between St. Rose and Vegas.
In other words, The Creator would essentially have to pay off the College of St. Rose to allow them to use the name Golden Knights legally.
As far as the timeline goes, the initial trademark was filed to the USPTO on August 23rd, 2016. The denial letter came in on December 7th, 2016. We can expect this process to take as long, if not longer, leading us likely into the beginning of the inaugural season with the Vegas Golden Knights trademark not officially approved.
Because the Vegas Golden Knights organization was basically raked over the coals for the first denial letter, I believe it’s only fair if I point out the humanness of the USPTO attorney that issued the denial letter.
In the first sentence of the denial letter received on December 7th the attorney states the reason for refusal of the trademark is because of likelihood of confusion with U.S. Registration mark numbers 4325030 and 4325031. Those are meant to reference the existing trademarks for the College of St. Rose Golden Knights. One problem… those mark numbers are for the Syracuse Silver Knights.
Because of this mistake, the response letter sent by the attorney representing the Vegas Golden Knights had to include a special note at the bottom of the very first page.
Applicant notes that, in the Office action dated December 7, 2016, the Examining Attorney appears to have erroneously cited to U.S. Registration Nos. 4325030 (SYRACUSE SILVER KNIGHTS & Design) and 4325031 (SYRACUSE SILVER KNIGHTS). However, as the remainder of the Office action and its exhibits make it clear that the Examining Attorney intended to refer to the Cited Registration, Applicant has responded accordingly.
In the end, it’s a harmless mistake by a guy who had to prepare a 164 page letter to say “no,” but the fact remains, this denial based on the “likelihood of confusion” was a decision made by a single person at the USPTO. Before you continue to kill the Vegas NHL franchise likely to eventually be named the Vegas Golden Knights over what appears to have been a major misstep in trademark research, realize when it’s all said and done, it could be this attorney who made the mistake, not The Creator, the NHL, and everyone involved with the initial submission.
Again, I’m not a trademark attorney, and this stuff tends to get way above my head quickly, but I’m just recommending to exercise patience here. There will be plenty of time to absolutely crush them if they have to change the name, but until that moment, hold back, it will probably keep you from looking like an idiot if the trademark does indeed get approved.