January 30, 2018

The Fight Over the "Golden Knights"

by Stites & Harbison, PLLC

Since becoming a Nashvillian a little over a year ago, I've fallen in love with a new sport: hockey. Hockey fever is infectious and its contraction was almost unavoidable as the Nashville Predators made it all the way to the Stanley Cup Final for the 2016-2017 season.

This year, there is a new team that has attracted attention both on and off the ice: the Las Vegas Golden Knights. Despite being an expansion team, the Vegas Golden Knights have had a record-setting inaugural season, are currently first in their division, and have even positioned themselves for a run at the 2017-2018 Stanley Cup. In fact, if you check the odds, Vegas is betting on Vegas.

Off the ice, however, the Vegas Golden Knights have found themselves in a bit of hot water as they continue to encounter opposition regarding four of their federal trademark applications. Trademarkology readers might recall that these trademark troubles began back in 2016. For a primer on this subject, check out our prior post: NHL Team Trademark Gets Iced.

Shortly after the Las Vegas NHL hockey franchise announced that it would be known as the Golden Knights in November 2016, office actions were issued by the USPTO which refused the marks "VEGAS GOLDEN KNIGHTS" and "LAS VEGAS GOLDEN KNIGHTS," associated with clothing items, on the basis of potential likelihood of confusion with a prior-registered mark for "GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE" owned by the College of Saint Rose in Albany, NY. The Vegas Golden Knights responded to the office actions in June 2017; however, final disposition has been stalled as the Vegas Golden Knights' applications have been suspended pending disposition of earlier filed applications.

Bishopblogpost Goldenknightsst Rose Jan2018
Bishopblogpost Goldenknights Jan2018 Jpg

More recently, two other applications for "VEGAS GOLDEN KNIGHTS" and "LAS VEGAS GOLDEN KNIGHTS," for use in connection with entertainment services, namely, professional ice hockey exhibitions, have also been attacked â but this time by none other than the United States Department of Army (yes â THE ARMY)! These two applications for entertainment services were published for opposition in August 2017. The College of Saint Rose responded by requesting an extension of time to oppose. The Army responded by filing its formal Notice of Opposition with the Trademark Trial and Appeal Board ("TTAB") on January 10, 2018, requesting that the Vegas Golden Knights' applications be refused registration. The Army believes that allowing registration of the "VEGAS GOLDEN KNIGHTS" or "LAS VEGAS GOLDEN KNIGHTS" would cause a likelihood of confusion, dilution of their brand, and perhaps even cause people to think that the Vegas NHL team is connected or affiliated with the Army.

The renowned U.S. Army Parachute Team has been nicknamed the "Golden Knights" since 1962 and also uses a "yellow/gold, black, and white" color scheme.

Interestingly, the owner of the Vegas Golden Knights NHL team, Bill Foley, was a 1967 graduate of West Point and the Army believes his selection of the "Golden Knights" name and color scheme was intentional. The Army even cited a Tweet from the Vegas Golden Knights' team manager, George McPhee in its Notice of Opposition.

Bishopblogpost Goldenknights Tsnradio Jan2018 Jpg

Pursuant to trademark law, the Vegas Golden Knights initially had 40 days to answer the Army's Notice of Opposition (which would have been Feb. 19, 2018). However, recent filings with the TTAB reflect that the parties are actively engaged in settlement negotiations and have agreed to suspend all deadlines for 90 days.

So what does this mean? Will the Vegas Golden Knights have to change their name?

TTAB proceedings only relate to whether the Vegas Golden Knights can obtain federal trademark registrations. (To obtain injunctive relief and/or damages against the Vegas Golden Knights, it would be necessary to file a lawsuit in court.) TTAB proceedings often lead to settlement agreements, which I'm sure all of the parties involved would prefer over expensive and protracted litigation.

We will be monitoring the TTAB proceedings and the status of this fight over the "Golden Knights" so stay tuned and subscribe for future updates!