New Hockey Team's Trademark Dispute Nothing New

Immediately after the USPTO's decision, NHL Deputy Commissioner Bill Daly issued the following statement: “We consider this a routine matter and it is not our intention to reconsider the name or logo of this franchise. We fully intend to proceed as originally planned, relying on our common law trademark rights as we as our state trademark registrations while we work through the process of addressing the question raised in the federal applications.”

The focus of the USPTO's analysis in denying registration was on the words “Golden Knights,” which it deemed the dominant portion of both the registered and applied-for marks. The examiner gave little weight to the club's use of the terms Vegas and Las Vegas before Golden Knights, concluding that such terms are geographically descriptive and therefore “typically less significant or less dominant when comparing the marks.” Because the marks would be used for both collegiate and professional sports “played at the same large arenas for the entertainment of the same class of consumers,” the USPTO concluded that consumer confusion was likely, thus precluding registration of the hockey team's marks.

Shared Names Are Common

The USPTO's ruling was unexpected and curious, given the long history of sports franchises sharing team names. For more than 30 years, the baseball and football New York Giants shared a name and even played in the same stadium, the Polo Grounds in upper Manhattan. Likewise, the baseball and football St. Louis Cardinals shared the spotlight in Missouri for nearly three decades. Even after the baseball Giants departed for San Francisco and the football Cardinals resettled in Arizona, each kept its original name. Today, one would be hard pressed to find consumer confusion for the baseball teams and their like-named football counterparts.

Colleges and professional have shared monikers. The University of Miami was unfazed when the NHL Hartford Whalers relocated to North Carolina in 1997 and was renamed the Carolina Hurricanes. And since 1993, the Florida International University Golden Panthers have shared their name with the NHL's Florida Panthers. In both instances, the professional and collegiate teams have peacefully coexisted with no known consumer confusion.

The long history of name sharing among sports teams strongly suggests that the Vegas Golden Knights will eventually obtain registration of its marks, despite the USPTO's initial misgivings. The team has stated that it intended to file a response to the examining attorney's office action, disputing the latter's finding of likely consumer confusion between the hockey team and the College of Saint Rose. The NHL club will assuredly contest the USPTO's dismissal of its use of Vegas and Las Vegas in its marks as distinguishing features. The reality is that, in sports, a city or state preceding a team nickname provides much more than mere geographic designation. The city or state becomes very much a part of the team name and identity. Consumers are as unlikely to confuse the Vegas Golden Knights with the Golden Knights of Saint Rose as they are to confuse Las Vegas with Albany.

And if all else fails, the hockey team might sign a formal co-existence agreement with the college, something that has been done in the past when similar issues have arisen. The College of Saint Rose is unlikely to resist such overtures from the NHL club because the enhanced visibility of the hockey team would assuredly help the college's name recognition and merchandise sales.

Things would certainly be easier had a different examining attorney been assigned to the marks, one who placed greater emphasis on the history of name sharing in American sports. Unfortunately, in rolling the dice with its trademark applications, the Vegas hockey team came up snake eyes, drawing an examiner who was less than sympathetic to its cause. But the club has several additional rolls before it leaves the table.

***** Elio F. Martinez Jr. is a partner with the intellectual property law firm of Espinosa Trueba Martinez in Miami, FL. He focuses his practice on intellectual property litigation, specifically infringement of trademarks, patents and copyrights as well as protection of trade secrets. He can be reached at [email protected].