Likelihood of ConfusionNHLSportsTrademarks

Las Vegas Golden Knights Trademark Battle Was Avoidable

There is a history of sports teams sharing names

There are multiple examples of professional and college sports teams that share nicknames. Texas (MLB) and New York (NHL) share the Rangers name. New York (NFL) and San Francisco (MLB) share the Giants moniker. Carolina (NFL) and Florida (NHL) each created expansion teams in 1993 assuming the name “Panthers.”

The newly formed Las Vegas Golden Knights too shares its name with other sports teams. The University of Central Florida Golden Knights completed an undefeated season in the Division 1 college football subdivision. The Clarkson Golden Knights are currently enjoying an undefeated men’s hockey season within Division 1’s ECAC conference. College of Saint Rose, a small Division II school in Albany, is also known as the Golden Knights.

Las Vegas’ Selection of the Golden Knights name

The Las Vegas NHL organization had two important considerations, as most potential brands do, before selecting a name. The first consideration was a common-sense consideration. Does the name fit the product? The second consideration was a legal consideration. Were there conflicts with the name that will cost money and cause uncertainty as to the future of the name? The Las Vegas organization’s stubbornness in failing the first consideration led them to fail the second consideration. These considerations involve not only whether the team could win if litigation arose, but if the organization was putting itself in harm’s way of potential, avoidable litigation.

The Golden Knights nickname, when selected, was predominantly derided by the public. The name had little, if any, connection to the city itself and Las Vegas is a city that lends itself to an array of colorful nicknames. It was known publicly, even before the name was officially announced, that owner Bill Foley was keen to choose a name that was reflective of his alma mater, the United States Military Academy. West Point’s nickname is the Black Knights, but they have a well-known parachuting team called the Golden Knights. Foley’s financial company has been known as Black Knight Financial Services or Black Knight since 2014.

The Las Vegas organization and the NHL took some of the correct steps to search and clear the name before applying for the federal trademark. The name was cleared with both Clarkson University and the University of Central Florida. Inexplicably, the organization and the NHL did not do the same with the United States Military Academy. Again, this decision should have involved both common-sense and legal considerations. Foley was clearly paying homage to his alma mater. However, from a public relations standpoint the decision could be a poor one if West Point was not on board. Both Foley and general manager George McPhee made public statements that demonstrated the organization took the idea for the team name from the Golden Knights parachute team.

USPTO rejection of the trademark & Army opposition

Trademark disputes of this nature almost always return to likelihood of confusion. Strangely enough, the initial application for the Las Vegas Golden Knights trademark was rejected by the USPTO examiner due to likelihood of confusion with the College of Saint Rose Golden Knights trademark. The rejection was nonsensical, as even hardcore sports fans would be hard-pressed to name the College of Saint Rose or its moniker. There was little chance for confusion between a small Division II school in Albany, NY and a NHL organization in Las Vegas. If multiple professional sports teams can share the same nickname, certainly those two organizations can as well.

The Las Vegas Golden Knights and the NHL now face a more serious challenge from the United States Military Academy’s opposition of the Vegas Golden Knights trademark. The team will make the valid point that there is little likelihood of confusion between an Army parachute team and a NHL organization. Vegas is also aided by the fact that the Army had not trademarked the Golden Knight name. West Point will try and argue a different type of likelihood of confusion; not confusion that the public cannot tell the difference between a parachute team and a hockey team. The possible confusion is that the public will be unable to decipher that West Point is not associated with or endorsing the hockey club.

It was well known that Foley wanted to use the Black Knights name for the team but changed his plan due to West Point’s legal claim to the trademark. He then tweaked the name to another nickname associated with West Point, but that was not federally trademarked. Both he and McPhee made public statements confirming the reasons for the Golden Knights name choice. Foley also invited the Golden Knights parachute team to appear at a team event, just weeks before the hockey club’s name was revealed. Foley also admitted the team and the NHL did not clear the name with the Army even though they decided to do so with two other organizations.

Likelihood of confusion: actual confusion and intent

One likelihood of confusion factor that can tip the scales for a plaintiff is the defendant’s intent. Here, the intent of using the goodwill of the Golden Knights name is clear. While other factors could prove there is no likelihood of confusion, an intention to take from the reputation of West Point’s mark is not helpful.

Some have opined that it is unlikely the Vegas Golden Knights would have to relinquish its rights to the name, but may have to change its colors or logo. I generally agree with the first point but disagree with the second.

First, West Point likely does have an uphill battle to challenge the trademark. They will attempt to illustrate the intent of Foley and the hockey club. They will also try to show a likelihood the public will believe they are endorsing or connected with the hockey club. Vegas will concentrate on the basic reasoning that many sports organizations share names and nobody is confused. Therefore the public will not be confused between a hockey club and a parachute team that did not have a federal registration for the mark.

Secondly, the colors and logo do not seem to be an issue in this matter. If an organization is allowed to trademark or be called the Golden Knights, one would assume the colors of the team would utilize the color gold. One might also assume the logo of the organization would depict a knight or a knight’s helm. The Army’s Golden Knights logo is yellow-gold and black featuring the side profile of a classic knight’s helm. Vegas’s Golden Knights logo is rust-gold and black featuring a front-facing view of a modern knight’s helm.

The colors and logos are unlikely to cause confusion, nor would the public expect the colors or logos to be anything but what they are. The trademark dispute should turn on the actual Golden Knights moniker, not the color or logo. Actual confusion and the intent of the disputed party will be two of the main factors that must be considered.

Whether the name stays or goes, the Las Vegas Golden Knights and the National Hockey League may want to revisit whether refusing to deviate from a nickname reflecting the owner’s personal experience with another entity and not that of the fans in club’s city was ill-advised from the beginning.