The United States Patent and Trademark Office (“USPTO”) issued an Office Action with regard to the trademark application of the NHL’s newest franchise, the Vegas Golden Knights. In its 164-page non-final office action (“Office Action”), the USPTO set forth the reasons for preliminarily denying the application for registering the proposed mark, “Vegas Golden Knights” (“Applied-For Mark”), to the Las Vegas-based ownership group, Black Knight Sports and Entertainment LLC (“Applicant”). The USPTO’s primary reason for denial is based on the applied-for mark’s likelihood of confusion with “Golden Knights the College of Saint Rose” (“Registered Mark”), a trademark registered to College of Saint Rose Corporation, a private, independent college located in Albany, New York. The Office Action also requires a response to issues related to prior advisory opinions and the failure to disclaim any right to “Vegas.”

Under Trademark Act Section 2(d), an applied-for mark will be barred from registration if it so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. Id. The Office Action finds that the Applied-For Mark will likely be confused with the Registered Mark for two reasons: the similarity of the marks themselves and the similarity of services.

First, the use of “Golden Knights” is “the dominant portion of both the registered and applied-for marks,” and “the additional wording [ Vegas or The College of Saint Rose] does not change the overall commercial impression of the marks.” Office Action at pg. 1. As such, the examining attorney found that “the marks are identical in part, sharing their most dominant and source-identifying portions, and are confusingly similar when compared in their entireties.” Id.

Second, the examining attorney found that the similarity of services may also result in a likelihood of confusion. The Applied-For Mark and Registered Mark each list their services as “entertainment in the form of sports exhibitions.” Id. The examining attorney determined that the distinction between professional hockey and collegiate-level sports was considered, but not determinative in finding the Applied-For Mark could be confused with the Registered Mark. Id. The examining attorney found that the College of Saint Rose’s “services are presumed to include all sports played at the collegiate level, including hockey.” Id. Therefore, the Applied-For Mark was denied.

Conclusion
This issue is far from resolved. As previously noted, the Office Action is non-final. Both the NHL and the Applicant have issued statements that they do not intend to abandon the Applied-For Mark, and will respond to the Office Action to pursue registration of the Applied-For Mark. The Applicant has until June 7, 2017 to respond to the Office Action, which is just months before the “Golden Knights” are set to take the ice for their inaugural NHL season. The Applicant will presumably rely on the multitude of college and professional sports teams with similar mascots and team names in stating its case as to why the Applied-For Mark should be granted.

Regardless of how much research an applicant, or the applicant’s attorney, performs in advance of attempting to register a trademark, there is always the distinct possibility that the USPTO and examining attorney will issue an office action for any number of reasons. The Minneapolis trademark attorneys at Trepanier MacGillis Battina P.A. are available to assist with all steps along the way for your trademark registration.

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About the Author:
Trepanier MacGillis Battina P.A. is a Minnesota trademark law firm located in Minneapolis, Minnesota. Their trademark law attorneys can be reached at 612.455.0500.