On December 7th, 2016 the Vegas Golden Knights received notice that their trademark application had been denied by the US Patent and Trademark Office (USPTO) due to the likelihood of confusion with the College of St. Rose Golden Knights. On June 6th, 2017, the Vegas Golden Knights responded in a 1,347-page document citing hundreds of examples explaining why they believe there is not a likelihood of confusion.
Unfortunately, for the Vegas Golden Knights, that response was still not fully compelling enough for the USPTO, but it was good enough to end the “will they change the name” drama. The Vegas Golden Knights filed two trademarks, one for “entertainment services, namely, professional ice hockey exhibitions” and another for “clothing.” The first was approved, the second was not.
This means the team name is exclusively trademarked when used for hockey games, and more importantly, confirms the team will not have to change their name. The clothing trademark, on the other hand, was suspended meaning the Golden Knights still do not own the exclusive rights to print the name on gear.
The examining attorney has carefully considered the applicant’s arguments and evidence, but has found the arguments unpersuasive. –USPTO Trademark Suspension Notice
Their main reasoning has to do with the fact that Golden Knights is two words, not one.
The examining attorney notes that within the applicant’s chart of third-party sports-related marks, there is no overlap like the kind at issue here; a number of “BEARS,” “BRUINS,” “DUCKS,” “GIANTS,” and “PANTHERS” (and others) co-exist using different geographic terms to help distinguish them, but the applicant has not provided examples of team names consisting of two words marks. For example, while there may be several “DUCKS,” there is only one “MIGHTY DUCKS.” Notably, while there are many “KNIGHTS” on the register, there is only one “GOLDEN KNIGHTS” for use in connection with apparel. -USPTO Trademark Suspension Notice
The Golden Knights will not be forced to change their name as they hold the exclusive trademark when it comes to use as a hockey team. The clothing trademark, however, remains in limbo. As of now, it has been “suspended” meaning there will be another round of legal arguments before any other judgment is made. Until this happens, they are not fully protected against others using the name Golden Knights on clothing.
Regardless, the lingering issue is of only limited importance as it does not bar the team from using the name “Golden Knights” or from claiming common-law trademark rights in the name through its continued use. The team is already selling hats, T-shirts, jerseys and a variety of other apparel and fan merchandise with the “Golden Knights” name. –Zachary Zagger, Law360.com
Wikipedia tells us the difference between the rights held for a registered trademark and a “common-law” trademark are rather minimal. Registered trademark holders can sue for damages against those who are infringing on their trademark, while “common-law” holders can only file to have those misrepresenting their brand to cease and desist, and in some cases only in limited geographical areas.
Either way, SinBin.vegas still cannot print a shirt using the Golden Knights name and logos and get away with it.
We are pleased with the progress in the Trademark Office as the trademark application process continues. -Vegas Golden Knights team spokesperson
All in all, the good news is the trademark story is pretty much over as the Golden Knights are officially the Vegas Golden Knights in terms of entertaining us. The bad news is, they still don’t have all the trademarks filed and we’re going to have to keep our eyes on this as the College of St. Rose could choose to make the clothing end a bit messy if they please.