Johnson Moss Law

On 1/20/17 I wrote about the trademark application filed on behalf of the Las Vegas Golden Knights professional hockey team was refused for registration (not a final refusal) by the assigned examining attorney from the U.S. Patent and Trademark Office (USPTO).  The main reason cited for the refusal was the likelihood of confusion between the mark seeking to be registered: Las Vegas Golden Knights with the existing trademark issued to The College of Saint Rose in New York: GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE®.  This post discusses the hockey team’s response to the USPTO’s refusal.  

The response filed by (counsel for) the Las Vegas Golden Knights is indicative of just how complex and time consuming the federal trademark application process can be.  The response was filed on June 6, 2017 and is 1,346 pages long, including 41 pages of legal argument.      

The response argues that despite the similarity of the words used, the trademark seeking to be registered; “Las Vegas Golden Knights”; is not likely to be confused with the existing trademark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE®, or any of the other potentially conflicting marks cited by the examining attorney for these reasons:  “(1) sports fans (and the general public) have long been accustomed to distinguishing between unrelated teams using the same or similar nicknames as 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 knowledgeable about the games they choose to watch and attend; and (4) the parties’ marks differ materially in appearance, sound, and commercial impression.”  Application Serial No. 87147269, June 6, 2017 Response to Refusal and Provisional Refusal Based on Likelihood of Confusion, pp-2-3.

In support of this argument, the response cites to over 40 identical or very similar trademarks that have been issued to identify both professional and collegiate levels of the same sport or for different types of sports.  Here are just a few examples listed in the response: BAYLOR BEARS and CHICAGO BEARS (NFL), DENVER BRONCOS (NFL), BOISE STATE BRONCOS, and the WESTERN MICHIGAN BRONCOS, the LOUISVILLE CARDINALS (University of Louisville), the ST. LOUIS CARDINALS (MLB) and the ARIZONA CARDINALS (NFL); the UCLA BRUINS, the BELMONT BRUINS (Belmont University) and the BOSTON BRUINS (NHL); the VIRGINIA CAVALIERS(University of Virginia) and the CLEVELAND CAVALIERS (NBA) and the list goes on and on.  The response argues that these registrations are evidence that the USPTO has long recognized that numerous sports teams with names using the same word or words can coexist without any confusion.  As a result, the USPTO should also recognize that the trademark identifying a professional hockey team can coexist with other trademarks using the same or similar words to identify collegiate sports teams.  In further support of their argument,  the response points out that there are 18 existing trademark registrations issued to various sports teams using the words “KNIGHT” or “KNIGHTS”.  If there is no likelihood of confusion between these existing trademark registrations using the same or similar words, then the registration of The Las Vegas Golden Knights trademark should not cause any confusion with GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE® or any other existing trademarks using the words “Knight” or “Knights” to identify a sports team.

This response is a great example of the complexity and nuances in trademark law.  The response makes a very detailed and well supported legal argument explaining how identical or very similar trademarks can coexist without creating any confusion in the marketplace.  My favorite example of identical trademarks not creating any confusion is Delta Airlines and Delta faucets.  Even though both of these trademarks sound and look the same (DELTA); they can coexist because there is no confusion among consumers seeking their services in the marketplace.  

What can we learn from this?  First, don’t file a trademark application without conducting a proper trademark clearance search.  Second, filing a response to an initial refusal to a trademark application can be very expensive and complicated.  Third, don’t be discouraged if the trademark you want to register uses words that are identical or very similar to an existing trademark.  As explained above, in certain circumstances, it is possible for trademarks using identical or very similar words to coexist, without creating a likelihood of confusion that will prevent a trademark from being registered.  Finally, seek the advice of an attorney experienced in trademark law prior to filing your trademark application to avoid wasting your time and money and to increase the chances that your application will be successful.