Las Vegas Golden Knights Trademark denied publication by USPTO - Application Lands in the Penalty Box.
THE USPTO THINKS THAT THE LAS VEGAS GOLDEN KNIGHTS TRADEMARK IS TOO SIMILAR TO THE COLLEGE OF SAINT ROSE'S TRADEMARK
The US Patent and Trademark Office has given Black Knight Sports and Entertainment LLC, (the corporate entity behind the new NHL team in Las Vegas) until June 7th, 2017 to respond to its Office action filed in response to the trademark applications for Las Vegas Golden Knights and Vegas Golden Knights.
The main issue that the USPTO has found with the registration of Las Vegas Golden Knights and Vegas Golden Knights is that they conflict with the Golden Knights trademark which has already been registered by The College of Saint Rose in Albany, NY.
When the trademark office evaluates marks for likelihood of confusion, they do so on a case by case basis, comparing the marks in their entireties, for similarities in their appearance, sound, connotation, and commercial impression.
In this case, there is an additional layer of complexity because the team has sought to register a geographical identifier, specifically, Las Vegas and Vegas. The trademark office will not allow registration of geographically descriptive terms. It is easy to see what kind of problems would be created if anyone could claim exclusive rights to Nevada, Denver, Albany, or Orlando. As a result, the marks being considered in this dispute of similarity are those of the Golden Knights (The College of Saint Rose) vs. the Golden Knights (NHL Golden Knights)
University of Central Florida was able to register UCF Golden Knights in 2005, a year after The College of Saint Rose had its registration approved by the USPTO. UCF is not a geographically descriptlive term, and therefore when considered for its similarity vs. Golden Knights or other similar terms, UCF made the mark sufficiently distinctive.
This is why the Golden Knight trademark, was also granted registration for use by a company that sells protective safety gloves. Despite the similar nature of the trademarks, it is unlikely that a potential consumer would be confused or deceived, and therefore think that the UCF Golden Knights, The College of Saint Rose Golden Knights, and the company selling protective gloves would have the same source, or be related in any way.
Although the NHL team can negotiate a deal with The College of Saint Rose to allow both of them to use the trademark, it is obvious to see who has the upper hand. One has to wonder why this wasn’t negotiated before untold money was spent on marketing the new NHL team name, as well as legal fees that are not likely to end soon.
Additionally, the trademark office has noted that there may be a potential conflict between the Golden Knights mark and several other pending applications that were filed prior to the NHL team’s application, including one by the now, UCF Knights.
This type of scenario is not uncommon for trademark attorneys to encounter, however, it is one that can be avoided. It highlights the importance of having a long term strategy that includes how to address potential pitfalls. This will put you in a position of strength, rather than being the party who clearly needs to make a deal happen.
A knowledgeable attorney can be an asset when dealing with any legal matter. If you have questions or concerns about your intellectual property I would be happy to discuss your situation. I can be easily reached by clicking on the Contact Sturman Law button on any page of SturmanLaw.com