The Las Vegas Golden Knights will begin its inaugural season in the National Hockey League this fall.  However, the “Las Vegas Golden Knights” Trademark is still in flux as the USPTO Examining Attorney has prelimnary refused registration of the franchise’s mark.

The applicant, Black Knight Sports and Entertainment, LLC, filed a response to the Office Action.

The Examining Attorney has refused the registration of the hockey team’s mark because of likelihood of confusion with the mark owned by the Golden Knights The College of Saint Rose.  The two marks would be in the same class, i.e., “entertainment services in the form of intercollegiate sports exhibitions in Class 41.

In addition, the application may be denied on the basis of likelihood of confusion with two existing applications, one submitted by the University System of Georgia and one by the University of Central Florida.  Notably, those marks were filed on June 30^th and July 26^th 2016 respectively.  The Las Vegas Golden Knights filed its trademark application with the USPTO on August 26, 2016.

Attorneys for the Las Vegas Golden Knights state that there would be no likelihood of confusion because sports fans are familiar with distinguishing between unrelated teams using the same names, sport fans know the difference between GOLDEN KNIGHTS and KNIGHTS when it comes to sports, they “by their very nature, are knowledgeable about the games they choose to watch and attend and “the parties’ marks differ materially in appearance, sound, and commercial impression.

The Office Action goes into detail about how the USPTO has allowed the “coexistence of the same or similar marks in sports, whether different sports or the same sport on different levels…”  They name approximately 40 names with 7 trademarks used by both a collegiate hockey team and an NHL hockey team.

They cite case law which indicates that differences between the sports the teams play, whether pro or college, or whether they play in different leagues, can be enough to render confusion unlikely.  The court in one of the cases cited by the Golden Knights attorney indicate that there was a superficial similarity between the two teams due to the creation of overinclusive categories that are irrelevant to the likelihood of confusion.

Interesting enough, the “Vegas Golden Knights” application under Class 41 has been accepted by the Attorney Examiner and will be made available to the public on September 12, 2017.  The public will have 30 days to oppose the mark registration.

The response to the Office Action focuses on the assertion that the public, specifically sports fans would not be confused by the similar marks or marks that are exactly the same.  The argument focuses on the knowledge of sports fans that they are accustomed to teams using the same name and evidence this through naming of trademarks registered by the USPTO.

We shall see if the Attorney Examiner allows the Las Vegas Golden Knights trademark to go through.  Of course, even if they do, it still may be opposed by the current trademark holder.  Regardless, it looks like this legal issue may not be resolved by the time the Las Vegas Golden Knights start their inaugural season.

Next weekend, Major League Baseball will pay homage to little league baseball with a “Players Weekend.”  As part of the weekend, players will have a chance to wear special uniforms with their nicknames on the back.  Even with the relaxation of the rules, MLB is still playing it cautious with possible trademark infringement issues.

Philly.com reported that at least two Philadelphia Phillies were denied their preferred nicknames because of intellectual property concerns.  Phillies pitchers Zach Eflin and Hoby Milner will not be able to wear their preferred nicknames.  Eflin wanted “Led Zeflin” which is a play on rock band Led Zeppelin and Milner wanted “Hoby Wan Kenobi,” based on the Star Wars character Obi-Wan Kenobi.

The Texas Rangers’ Adrian Beltre wanted to wear “Kojak” on his jersey.  But will not.  Notably, the Seattle Mariners closer Edwin Diaz is nicknamed Sugar after the main character in the 2008 baseball movie.  His jersey will read “Sugar.”  One may assume MLB believes no infringement issue here.  Of course, the name of the movie and the nickname here use a common word rather than Led Zeppelin, Obi-Wan or the popular 1970s tv character, Kojak.

The denials were due to concerns over trademark infringement issues with the holders of the mark.  Certainly, the apprehension with these nicknames had to do with concerns over whether the mark holders would put up a fight.

A reason for this weekend is to create another avenue for merchandise sales.  Jerseys with these nicknames go for $200 each while t-shirts go for $30 each.  Despite the lofty prices for the jerseys, fans will purchase some of these jerseys due to the uniqueness of the jersey.  It creates another asset for the team to market.  It’s a reason why NBA teams have extended the number of jerseys it has in its seasonal rotation.

While some attorneys claim that putting nicknames on the jerseys would not be infringement, there is an argument that there is licensing revenue that the markholders would be losing out on.  From a practical standpoint, MLB did not want to bog itself down in a trademark fight on jerseys it would wear for only one weekend.