Loyola University Chicago School of Law, JD 2019
Starting with the 2017 season, the National Hockey League (NHL) expanded to add the Vegas Golden Knights. If hearing “NHL” and “Golden Knights” confused you, you might not be alone – the Army parachute team is also named the Golden Knights. And that potential for confusion has caused the Army to file notice in the Patent and Trademark Office and request that the PTO refuse to register Vegas’ trademark.
Hockey in the desert
On June 22, 2016, the NHL announced that they had granted a new expansion team starting in 2017 to Las Vegas. Shortly thereafter, wild speculation began regarding what the team might be named, such as Aces, Jacks and the like, as well as the feasibility of having an ice hockey team in the middle of the desert. The team’s new owner, Bill Foley, was clearly optimistic about the team and wanted a strong name for his new franchise. Mr. Foley is a graduate of the Military Academy, whose mascot is the Black Knights, and wanted to call the team the Black Knights. However, many opposed and the idea was scrapped in favor of the Golden Knights.
As of January 27, 2018, the team is doing quite well, enjoying a comfortable 9-point lead over the San Jose Sharks and experiencing consistent sell out games. Unfortunately, the name has not gone over as well. The Army would like to stop the team from registering a trademark for a variety of reasons based on possible confusion of the teams and the possibility of the public assuming the teams are associated.
How are parachutes and ice skates confusing?
The likelihood of confusion (sound, appearance, or meaning) is grounds for refusal of a trademark according to the PTO. Importantly, it isn’t required to show actual confusion – someone going to a hockey game and expecting parachute artists or the opposite – but instead, just that the likelihood exists. In this instance, the sound is exactly the same. The appearance of the marks is different because each is stylized in its’ own unique way and it’s unlikely that someone would confuse the two logos. Though both teams do use a knight’s helmet, Vegas uses a helmet facing forward with a cut out in the shape of a “V” while the Army uses a helmet facing the side and includes additional text and background details.
Meaning could be a point of contention in this conflict in determining what “Golden Knights” really refers to. One could say that the name simply means “professional team” in which case the meaning would be the same. However, it could just as easily be said that for Vegas it means “ice hockey” and for the Army it means “parachutes”. It seems the most likely that the PTO will refuse the registration because the name for mostly the same purpose (as they have done before). In both instances the name refers to a professional group of performs that travels the country performing. In many instances the cities in which both teams perform may overlap and if both teams advertise at the same time and through the same channels, there is a significant chance of confusion.
Hockey players and soldiers
Another significant problem for Vegas is trademark dilution which can result from blurring and tarnishment. Blurring occurs when someone may draw an association between the existing mark and the proposed mark that is not intended. Tarnishment occurs when the reputation of the existing mark may be damaged by the new mark in some way. Vegas runs a high risk of both; blurring could occur when a person thinks the Vegas Knights are owned or supported by the Army, or tarnishment based on the conduct of the players (both on and off the ice).
The NHL is not particularly popular in America. Among the many other problems this poses, it poses a specific problem for Vegas. In the past the NHL granted an expansion team to Disney that many are probably familiar with: The Mighty Ducks of Anaheim. It wouldn’t be unheard of for a corporation, or in this case the army, to use a professional sports team as a marketing strategy. This could lead a person to think that the hockey team is a marketing strategy by the Army.
That lack of popularity also hurts Vegas because the NHL is actively trying to expand and grow in popularity. As more people learn about hockey for the first time, possibly by going to a game while visiting Vegas, it’s unlikely that they would go out of their way to look up the team history. On the other hand, the Army has had their team much longer and is extremely popular. Someone could assume the NHL had a deal with the Army to name a team for marketing purposes – using a longstanding, popular team name in order to draw in fans.
Five for fighting
Hockey players get disciplined. When it happens on ice, it poses no problem. The issue arises when those players get in trouble off ice. That’s not to say that soldiers don’t get disciplined, however, those aren’t reported side by side with the New England Patriots. This negative press is potentially damaging to the Army trademark’s reputation.
Another problem (which means a lot, depending on whom you ask) is that hockey includes fighting as a part of the game. Players are penalized, but fights are almost expected (‘I went to a boxing match and a hockey game broke out”) and some players are particularly popular because of their penchant for fighting. The Army certain wouldn’t want ESPN or the Chicago Tribune talking about how often a “Golden Knights team member” is constantly getting in fights. The Army has a particular, carefully crafted reputation and there is a strong argument that an NHL team with the same name will tarnish that reputation. This reputational tarnishment is another form of trademark dilution that may prevent Vegas from being granted a trademark.
Ultimately it seems more likely than not that the PTO will deny the registration because there is a high likelihood of confusion based on the names, as well as blurring and a high likelihood of tarnishment. Vegas was already denied registration on the same grounds when the conflict was with a university. The loss of the name would be substantial to the team, having spent millions on advertising and merchandising, but the team has been performing well beyond anyone’s expectations both financially and in points. The team is also young enough, only half way through their first season, that changing the name wouldn’t “rewrite” history, so to speak. The question that remains is what Vegas will change their name to next. With the looming trademark issues, Vegas’ best bet may be to double down on “Aces.”