— TTABlog (@TTABlog) February 2, 2018
As usual, a close look at TSDR reveals a great story here.
Let’s go back to the PTO’s 2016 non-final 2(d) refusal to register VEGAS GOLDEN KNIGHTS based on confusion with the registered mark GOLDEN KNIGHTS OF THE COLLEGE OF SAINT ROSE, which I blogged about here. As I note in my update to the post, a well-reasoned and presented opposition to the office action submitted by Catherine M.C. Farrelly overcame that refusal, resulting in a decision to publish the mark for opposition in August of 2017.
What was in that opposition? One point was that sports fans and the general public) are accustomed to distinguishing between teams using the same or similar nicknames, thus making confusion unlikely. The brief goes on for many pages citing the gazillion teams called BEARS, BRONCOS, BRUINS, CARDINALS, CAVALIERS, COYOTES and on and on and on as well as the trademark registrations issued for these names.
Hey, wait! What about the well-known rule that you can never cite a previous trademark registration as “precedent” with respect to your application, TMEP 1216.01 (“Decisions Involving Prior Registrations Not Controlling”)? And how about the rule that you can’t disprove a LIKELIHOOD OF CONFUSION by citing third-party trademarks, TMEP 1207.01(d)(iii) (Third-Party Registrations and Evidence of Third-Party Use?
The team’s response: “Application of a uniform standard to evaluate likelihood of confusion is a principle strongly advocated by the Board and the Courts. See In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001).” For what it’s worth, because I like to cite the TMEP to the TTAB, I might have coupled this general rule with the specific qualification of the general rule set out in TMEP 1207.01(d)(iii) itself:
[A]ctive third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)
True, a list of duplicative sports team trademark uses and registrations doesn’t exactly show that “a mark or a portion of a mark” — meaning the mark that is the subject of the application — “is so commonly used that the public will look to other elements to distinguish the source of the goods or services,” because here the third-party uses involve other marks, not GOLDEN KNIGHTS. But the principal is the same, as demonstrated by Juice Generation, Inc. v. GS Enterprises LLC, 115 U.S.P.Q.2d 1671 (Fed. Cir. 2015), which actually says that “[t]hird-party use of similar marks can show that customers have been educated to distinguish between different marks on the basis of minute distinctions” — a decision cited by the TMEP itself, and by the opposition. Nice!
Having established the general point, the opposition goes on to note in particular:
- Not only do sports-team names routinely coexist, there is plenty of evidence of coexistence among GOLDEN KNIGHTS-formative sports teams;
- Indeed, there are plenty of KNIGHTS teams in general, gilded or otherwise, demonstrating that the PTO acknowledges the significance of even relatively slight differences among them — and on that basis, there is no likelihood of confusion between VEGAS GOLDEN KNIGHTS and GOLDEN KNIGHTS OF THE COLLEGE OF SAINT ROSE;
- Indeed, these marks, despite having the common element of KNIGHTS, are more than slightly different.
Win for the VEGAS GOLDEN KNIGHTS!
But now… opposition from the U.S. Army?! Yes — based on both a LIKELIHOOD OF CONFUSION and a likelihood of dilution.
After that great opposition submission to the office action, what is the Army thinking? Here’s what it says, in sum:
- West Point’s sports teams are the Black Knights. The Army owns all sorts of rights in BLACK KNIGHTS.
- The Army has also used GOLDEN KNIGHTS as a trademark in connection with its parachute team — since 1969! — and not just for parachute team stuff but in general for Army recruiting
- The Army has also used the color scheme black+gold/yellow+white and developed common law rights in that scheme — the same scheme used by the Las Vegan Golden Knights.
- The owner of the Las Vegas hockey team, Bill Foley, is a West Point grad
- Foley has acknowledged the connection between his warm feelings about West Point and the trademark and trade dress used by the team
- Foley actually wanted to call the team the Black Knights but the Army made it clear it would not let him
This is actually kind of interesting. Until you get to this claim — without which no opposition is possible, but with which, this opposition comes across as arguably silly:
- People will think the U.S. Government controls the quality and nature of, or endorses the services of or sponsors, the NHL Las Vegas Black Knights
I don’t know. Maybe. This is certainly a better argument for “apparent government sponsorship” than some others we’ve heard in recent years.
Dilution? Maybe even better.
This is a fun case, which Kaleb McNeely has briefed at length in the post linked to in the tweet at the top. He also reports and comments as follows:
Given the admissions of its owner and General Manager, one would think that the Vegas Golden Knights’ trademark application is on thin ice. However, the fact that its name was admittedly modeled after the U.S. Army’s parachute team’s nickname does not necessarily spell defeat for Vegas. Indeed, the Golden Knights offered a preview of some of their main arguments in a witty but strongly-worded public relations statement issued in response to the Notice of Opposition, stating:
We strongly dispute the Army’s allegations that confusion is likely between the Army Golden Knights parachute team and the Vegas Golden Knights major-league hockey team. Indeed, the two entities have been co-existing without any issues for over a year (along with several other Golden Knights trademark owners) and we are not aware of a single complaint from anyone attending our games that they were expecting to see a parachute team and not a professional hockey team.
In other words, no one is likely to confuse the Vegas Golden Knights with the Army’s parachute team and, in fact, there has been no actual evidence of any such confusion to date (because no one goes to a hockey game to see parachuters). Vegas’ point about other “Golden Knights trademark owners” is also an interesting one. A search of the USPTO website reveals multiple registrations for that mark, including one by the College of Saint Rose in Albany, New York, whose athletic teams are called the “Golden Knights.” Another New York state university, Clarkson University, also uses the name “Golden Knights” for its sports teams. One wonders why the Army apparently is fine with those universities using the mark but not the Vegas hockey team . . .
I for one don’t think that question is a very wondrous one, on this record. Kaleb suggests that the Army is posturing for settlement, but I am not sure I see that here, either. And I have always been somewhat skeptical of trademark claims by government entities as well as the conversion of even frank homage into an occasion for trademark rent-seeking.
Yet this record does seem to tell a very interesting story that may give the Army’s claims more moral heft — though if not for the dilution angle, I would not bet on the Army winning this battle.
Either way, this is a fun case!