goldenknights2In 2017, Las Vegas will launch their first-ever National Hockey League team, bringing professional hockey to Sin City. However, the team’s chosen name, the Las Vegas Golden Knights, is already on thin ice. The team’s trademark applications were denied based on pre-existing registered trademarks containing the words GOLDEN KNIGHTS.

In July 2016, ESPN reported that owner Bill Foley was having trouble deciding a name. “We have a lot of names in mind, but a lot of the ones I really liked are trademarked, so that’s a little bit of an issue,” Foley said. “I’m happy to take any suggestions anyone has for a name, particularly one that’s not already trademarked.”

It seems that Foley may have been told by his trademark attorneys that the names he liked were high-risk trademarks, meaning that the trademarks would have a high-risk of rejection from the United States Patent & Trademark Office and may have a high likelihood of confusion with pre-existing trademarks. Despite these risks, it looks like marketing and personal preference won out over trademark legal advice, as the team’s management group moved forward with the “Golden Knights” name.

The USPTO denied the LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN KNIGHTS trademark applications. The government denied these trademarks based on the prior-registered GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE logo mark, Reg. No. 3188463. There was also a potential refusal based on a fraudulently filed trademark by an individual for LAS VEGAS BLACK KNIGHTS (an application which will never see registration because it is fraudulent.)

The only surprising part of the USPTO’s rejection of the team’s applications is that they did not cite more “GOLDEN KNIGHT” marks, such as those owned by the University of Central Florida, who also go by the “Golden Knights” and own a federal trademark registration for educational services. It seems extremely unlikely that the team’s trademark attorneys did not flag these trademark registrations as problematic.StRoseKnights

Granted, there are thousands of sports teams in the United States, ranging from professional sports to amateur and collegiate. Each of these teams have a name, logo and mascot and it can be extremely difficult to choose a unique name. We have the New York Rangers hockey team and the Texas Ranger’s baseball team. The Winnipeg Jets hockey team and the New York Jets football team. There is definitely reason for consumers to pay more careful attention, based on the “crowded field” that is sports in the United States.

However, selecting a name that is so similar to pre-existing marks was bound to be an issue for the Las Vegas NHL team, especially as they will use the mark on more than just “hockey games.” The mark will be plastered on everything from apparel to sports equipment to grilling sets. The Las Vegas team’s management were faced with a problem that a lot of business owners face every day. They came up with a name they liked, and someone else was already using something similar.

Advice that we at Gerben Law Firm always give our clients is “don’t fall in love with a mark.” Whenever you’re developing a trademark, always have back-ups that you would be comfortable working with and representing your company. If the first choice isn’t available, then go to the next one (or go back to the drawing board.) While this team will likely have an enormous legal budget to deal with this, they will likely spend a lot of money and aggravation “dealing” with prior users of the GOLDEN KNIGHTS trademark (perhaps through licensing deals or pro-longed legal battles.) They will also have to deal with competing for “distinctiveness” in the minds of sports fans, who might not immediately think of the hockey team when they hear “GOLDEN KNIGHTS.” However, most start-ups and small businesses can’t weather a legal set-back like this. By developing multiple trademark options before launching and analyzing your risk level before using a trademark, your company can avoid getting checked hard into the boards by legal fees and re-branding costs.