In which we blog on some other guy’s dice

Posted on Author Ron Coleman
Written by: Ron Coleman

The story linked to by Tiffany Valeriano explains:

The newest NHL franchise, set to debut in Las Vegas next year, might be considering other names for the team after the United States Patent and Trademark Office (USPTO) rejected the hockey team’s proposed trademark, “VEGAS GOLDEN KNIGHTS”.

In an Office Action issued this week (Dec. 7, 2016), an examining attorney preliminary rejected the mark “VEGAS GOLDEN KNIGHTS” because it was too similar and likely to be confused with the mark used by the College of Saint Rose, “ GOLDEN KNIGHTS OF THE COLLEGE OF SAINT ROSE“.

Interestingly, the College of Saint Rose (Albany, NY) doesn’t even have a sanctioned hockey team!

Tiffany asked me what I thought of this, and, gambling recklessly, I shared my entirely off-the-cuff thoughts (it was Twitter after all) in a series of tweets — but as a LIKELIHOOD OF CONFUSION® Premium Subscriber, however, you get it all here.  To wit (edited a bit to take advantage of the “long form” option):

I don’t do a lot of prosecution, but I’d guess the requested “Vegas” disclaimer should do the trick here if the PTO is satisfied with an appropriate response to the office action.  Presumably the issue with GOLDEN KNIGHTS is that unlike common school sports team names such as “Wildcats” or “Tigers,” GOLDEN KNIGHTS is arguably truly “distinctive,” i.e., unusual.

It’s not at all obvious that it helps the applicant here that the Albany school has no hockey team though because of the “bridging the gap” factor (2d Cir.’s good term under Polaroid, presumably subsumed in the vague formulation used in the Federal Circuit, “the extent to which applicant has a right to exclude others from use of its mark on its goods”) in LOC analysis.

But there seems to be a good argument on what I’m guessing is the distinctiveness point.

Better question however is why was this trademark registration was even sought considering that there was an obvious 2(d) problem?

The answer is probably the Las Vegas angle — more licensing opportunities anticipated, etc. Plus the name GOLDEN KNIGHTS must have seemed irresistible given the play on “golden nights.”  Someone was likely hoping that adding “VEGAS” to the formula would fool the examining attorney, but that’s not going to happen in the digital-search era, especially given the higher quality of examination these days.

UPDATE: In this well-done response to the office action, the team succeeded in convincing the PTO to publish the mark for opposition in August 2017.

Originally posted 2016-12-12 17:13:36. Republished by Blog Post Promoter

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